News & Analysis as of

Claim Limitations Patent Applications

Womble Bond Dickinson

USPTO Addresses Ambiguities in Means-Plus-Function, Step-Plus-Function Claims

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United States Patent and Trademark Office (USPTO) officials recently reiterated to all patent examiners that they must provide clear, consistent analysis regarding means-plus-function and step-plus-function limitations. ...more

Morrison & Foerster LLP - Federal Circuitry

Last Week In The Federal Circuit (January 3 – January 6): Corroboration Station

A new year means new Federal Circuit decisions to analyze. Our case of the week recounts an interesting saga of companies copying each other’s patent applications to provoke an interference. And if that’s not enough to grab...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - October 2022

Provisur Technologies, Inc. v. Weber, Inc., Appeal Nos. 2021-1942, -1975 (Fed. Cir. Sept. 27, 2022) - In this week’s Case of the Week, the Federal Circuit reviewed an IPR decision and addressed the Patent Trial and Appeal...more

McDonnell Boehnen Hulbert & Berghoff LLP

Tris Pharma, Inc. v. Actavis Laboratories FL, Inc. (Fed. Cir. 2022)

Almost four years ago, in a relatively rare occurrence based on there being an insufficient factual record to permit proper appellate review, the Federal Circuit vacated a District Court decision rendering invalid the claims...more

Weintraub Tobin

When Can a Patent Claim Positively Include the Negative?

Weintraub Tobin on

Most patent claims describe an invention using positive claim limitations that expressly recite the required elements or features of an invention. Sometimes, however, it is necessary, or desirable, to use a negative claim...more

Downs Rachlin Martin PLLC

Means Plus Function – Williamson Removed The “Heavy” Presumption But Dyfan And VDPP Pack Some of the Pounds Back On

When a claim term is construed as a means plus function limitation, the recited “means” is limited to only the specific structures disclosed in the specification for performing the recited function, and a limited range of...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (July 12-16): Under Alice, Another Patent Bites The Dust

Keniece Gray, Morrison & Foerster summer associate, co-authored this post.  We could have a new Federal Circuit judge today (achieving gender parity on the Court). Last week, the Senate invoked cloture (by a 63-34 vote) on...more

Smart & Biggar

Patentability of diagnostic methods – has the Canadian Patent Office drawn the line?

Smart & Biggar on

The importance of medical diagnostic technologies has been brought to the fore with the COVID-19 pandemic. Rarely does a day pass when the media does not report on matters of approval and availability of tests, testing...more

McDonnell Boehnen Hulbert & Berghoff LLP

Supreme Court Denies Certiorari in Actavis Laboratories v. Nalproprion Pharmaceuticals

In the Supreme Court's recent clarifying campaign through the Federal Circuit's U.S. patent law jurisprudence, one section of the statute, 35 U.S.C. §112(a) has been noticeably left unscathed. Indeed, avoidance of this...more

Knobbe Martens

Federal Circuit Review - November 2019

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The Appointments Clause: Ensuring That PTAB Decisions Are Subject to Constitutional Checks and Balances  In Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 18-2251, the Federal Circuit ruled that, under the then-existing...more

McDermott Will & Emery

Travel Trailer Pulls Patent Around Prior Art

McDermott Will & Emery on

In an appeal stemming from the denial of a patent application under § 102(b), the US Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB) by holding that the claims’ preambles were claim...more

McDermott Will & Emery

Incomplete Hybridization: Lack of Enablement Found Where Claims Encompass Thousands of Possibilities

McDermott Will & Emery on

Finding that the number of possible embodiments that could fit within the limitations of the asserted claims numbered in the “tens of thousands,” the US Court of Appeals for the Federal Circuit held that the claims were not...more

Knobbe Martens

The Tangential Exception to Prosecution History Estoppel

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ELI LILLY AND COMPANY v. HOSPIRA, INC. Before Lourie, Moore, and Taranto. Appeal from the District Court for the Southern District of Indiana. Summary: A narrowing claim amendment does not necessarily surrender all...more

Mintz - Intellectual Property Viewpoints

Understanding the USPTO’s Interpretation of 35 U.S.C. § 112 for Computer-Implemented Functional Claim Limitations

Patent practitioners, inventors, in-house counsel, and patent examiners alike have been clamoring for more guidance on computer-implemented functional claim limitations invoking § 112(f) since the Federal Circuit’s en banc...more

Knobbe Martens

101 Patent Reform Progressing in Congress

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On May 22, 2019, a bipartisan committee of the U.S. Senate and House released a draft bill on § 101 reform, in a further attempt to reduce procedural obstacles for patent applicants. The draft bill would change the...more

Bradley Arant Boult Cummings LLP

A Morass of Possible Combinations Does Not Satisfy the Written Description Requirement under 35 U.S.C. § 112

In a decision issued by the Federal Circuit on October 24, 2018, the court affirmed a finding by the Patent Trial and Appeal Board (PTAB) that a multiple sclerosis (MS) treatment claimed in an application owned by FWP IP APS...more

Jones Day

Change Is Coming (Maybe): Reviewing the AIA Reviews and 101 “Clarity”

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On April 18, 2018, the Director of the USPTO Andrei Iancu informed the U.S. Senate Judiciary Committee that he aims to propose changes to America Invents Act reviews by this summer 2018. The Director told the Committee that...more

Womble Bond Dickinson

Negative Limitations in a Patent Claim – Broad or Narrow?

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Negative limitations, using words like “not”, “without”, or “excluding” in a patent claim, understandably make patent practitioners and clients nervous. Generally, positive limitations are preferred and negative limitations...more

Knobbe Martens

Will Courts Consider Evidence of Patent Eligibility?

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Patent enforcement by Texas-based DataTreasury Corp. (“DataTreasury”) was a key motivation for the creation of Covered Business Method Review (“CBM”) proceedings. Senator Charles Schumer of New York, referring to...more

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