News & Analysis as of

Functional Claim Language

Axinn, Veltrop & Harkrider LLP

Dancing With Alice? Stay Within the Claims

The Alice two-step analysis on patent eligibility cannot venture far outside the actual claim language according to the Federal Circuit’s non-precedential opinion issued on Thursday, February 1, 2024. See Eolas Techs. v....more

Buckingham, Doolittle & Burroughs, LLC

Amgen is Not the End of Chemical Innovation

Some chemical innovators have found the recent Supreme Court decision in Amgen v. Sanofi to suggest that chemical inventions will be subject to new and draconian disclosure standards going forward. A few have even suggested...more

Womble Bond Dickinson

Unpredictability In The Art: Amgen v. Sanofi In View Of “Simultaneous Conception And Reduction To Practice”

Womble Bond Dickinson on

After reading the Supreme Court’s decision in Amgen v. Sanofi, I thought of the doctrine of simultaneous conception and reduction to practice, given both the decision’s and the doctrine’s focus on unpredictability in the art....more

Levenfeld Pearlstein, LLC

Enablement Unchanged: Amgen v. Sanofi and the Future of Software Patents

In a unanimous ruling, the Supreme Court of the United States (SCOTUS) addressed the enablement requirement under Section 112 of the Patent Act, placing this into sharper focus with the Amgen v. Sanofi case. This landmark...more

Fitch, Even, Tabin & Flannery LLP

Reliance on Obvious Clerical Error Does Not Avoid Willfulness

The Federal Circuit’s recent decision in Pavo Solutions LLC v. Kingston Technology Company, Inc. sheds light on situations where it is appropriate for a court to rewrite claim language to preserve the drafter’s intent. The...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2022 #2

Atlanta Gas Light Company v. Bennett Regulator Guards Inc., Appeal Nos. 2021-1759 (Fed. Cir. May 13, 2022) - In this week’s Case of the Week, the Federal Circuit Court addressed the third appeal from an underlying inter...more

Knobbe Martens

Billion Dollar Verdict Erased by Inadequate Description of Functional Claims

Knobbe Martens on

JUNO THERAPEUTICS, INC. v. KITE PHARMA, INC. Before Moore, Prost, and O’Malley. Appeal from the United States District Court for the Central District of California. Summary: Knowledge of a common general structure and the...more

Vinson & Elkins LLP

Functional Limitations In Biotechnology Risk Invalidity For Lack Of Enablement

Vinson & Elkins LLP on

On February 11, 2021, the Federal Circuit issued an opinion that suggests that inventions in fields where outcomes are unpredictable, such as biotechnology and chemistry, are more likely to lack enablement if they contain...more

Vinson & Elkins LLP

Federal Circuit Holds That The Term “Computer” Is Indefinite Based On Conflicting Positions Taken During Prosecution

Vinson & Elkins LLP on

On February 10, 2021, the Federal Circuit held that the term “computer” was indefinite because the prosecution history included arguments distinguishing prior art references that relied on conflicting understandings of the...more

McDermott Will & Emery

Functional Claim Language Describing System Capabilities May Undermine Indefiniteness

McDermott Will & Emery on

Addressing issues of indefiniteness and claim construction, the US Court of Appeals for the Federal Circuit affirmed the district court’s claim construction but reversed its indefiniteness decision, concluding that the system...more

Jones Day

Product-by-Process Claims Invalid when the Process Does Not Impart Structural or Functional Differences

Jones Day on

The PTAB issued a final written decision in IPR2016-00006, holding claims 1–22 of U.S. Patent No. 8,497,393 (“the ’393 patent”) unpatentable under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a). All of the claims are...more

Jones Day

Including Functional Claim Language Helped Save Pozen’s VIMOVO® Patents

Jones Day on

On February 28, 2017, the PTAB held that the petitioner Lupin had not shown that the challenged claims in two of Pozen’s patents were invalid (IPR2015-01773 and IPR2015-01775).  These cases show the advantage of using...more

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