Indefiniteness Before the PTAB
Judge Paul A. Engelmayer (S.D.N.Y.) recently construed claim terms at issue in a patent litigation between Plaintiffs Trove Brands, LLC, d/b/a The BlenderBottle Company, and Runway Blue, LLC (collectively, “Trove”) and...more
The US Court of Appeals for the Federal Circuit affirmed a district court’s ruling that a software term was a “nonce” term that invoked 35 U.S.C. § 112, sixth paragraph (i.e., a means-plus-function claim element). The Court...more
In a patent-infringement case involving fiber-optic-cable assemblies, Magistrate Judge Steven I. Locke (E.D.N.Y.) recently rejected defendants’ arguments that two terms in the patent claims were indefinite under 35 U.S.C. §...more
2024 was an active year in Canadian patent law, with the Federal Court issuing several decisions on the merits regarding invalidity and/or infringement. The courts also considered issues of the regulation of patent agents,...more
2024 was another busy year for district court decisions! There were multiple jury trials, case-dispositive design patent decisions, and claim construction decisions across a range of venues and at a range of case postures. We...more
Defining Indefiniteness: When Are Claim Limitations Contradictory? In Maxell, Ltd., v. Amperex Technology Limited, Appeal No. 23-1194, the Federal Circuit held that two claim limitations are not contradictory if they...more
The US Court of Appeals for the Federal Circuit reversed a district court’s indefiniteness determination, finding that two claim limitations – one broad and one narrow – were not contradictory since it was possible to meet...more
Earlier today the Federal Circuit in Maxell v. Amperex, No. 23-1194, vacated a District Court’s indefiniteness determination after distinguishing an indefinite patent claim having contradictory claim limitations from a patent...more
We are excited to share Sheppard Mullin’s inaugural quarterly report on key Federal Circuit decisions. The Spring 2023 Quarterly Report provides summaries of most key patent law-related decisions from January 1, 2023 to March...more
避而不谈可能支持否定性权利要求限定 - 在 Novartis Pharmaceuticals 诉 Accord Healthcare Inc. 一案（上诉案件编号：21- 1070）中，联邦巡回上诉法院认为，一项对药物“速效剂量”避而不谈的专利申请，为要求不存在此类剂量的否定 性权利要求限制提供了书面说明支持。 ...more
記述がないことがクレームの否定的限定のサポートと解釈できる場合がある Federal Circuit は、Novartis Pharmaceuticals v. Accord Healthcare Inc. (Appeal No. 21-1070) に おいて、薬剤の「初回負荷用量」についての記述がない特許出願は、そのような用量がないことを要 求するクレームの否定的限定に記述によるサポートを提供していることになると判示した。 ...more
January 2022 Federal Circuit Newsletter (Japanese) January 2022 Federal Circuit Newsletter (Chinese) Silence May Support Negative Claim Limitation In Novartis Pharmaceuticals v. Accord Healthcare Inc. Appeal No. 21-1070, the...more
NATURE SIMULATION SYSTEMS INC. v. AUTODESK, INC. Before Newman, Lourie, and Dyk. Appeal from the United States District Court for the Northern District of California. Summary: It was improper for the district court...more
The US Court of Appeals for the Federal Circuit affirmed a lower court’s findings of noninfringement, in part because the plaintiff had failed to prove the “way” element of the function-way-result test for a first...more
Traxcell Techs., LLC v. Sprint Commn’s Co. et al Before Prost, O’Malley, and Stoll. Appeal from the Eastern District of Texas. Summary: A patentee’s extensive citations to evidence failed to avoid summary judgment of...more
Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest. Precedential opinions: 1 - v Non-precedential opinions: 4 - Rule 36: 3...more
Corresponding Structure Snafu: Lack of Algorithm Renders Claims Indefinite - In Rain Computing, Inc. v. Samsung Electronics Co. Ltd., Appeal No. 20-1646, the Federal Circuit held that the structure for performing a...more
By Memorandum Opinion entered by The Honorable Colm F. Connolly in University of Massachusetts et al. v. L’Oréal USA, Inc., Civil Action No. 17-0868-CFC-SRF (D.Del. April 20, 2021), the Court granted Defendant L’Oréal’s...more
In determining whether a claim element invoked 35 USC § 112, ¶ 6, the US Court of Appeals for the Federal Circuit concluded that “module” was a nonce term and required sufficient corresponding structure in the patent...more
Rain Computing, Inc. v. Samsung Electronics America, Inc., Appeal Nos. 2020-1646, -1656 (Fed. Cir. Mar. 2, 2021) - Our Case of the Week focuses on the issue of indefiniteness, and particularly, terms that are construed as...more
The US Court of Appeals for the Federal Circuit affirmed a district court’s determination that three patents directed to data synchronization were indefinite as lacking sufficient disclosed structure to support a means plus...more
Goodwin’s 337 Quarterly Insider remains the premiere publicly available source for keeping up to date on all meaningful decisions coming out of the Commission. Please find below Goodwin’s insights on the months of April, May,...more
The Federal Circuit has spent the past few years applying the Supreme Court's most recent precedent, Nautilus, Inc. v. Biosig Instruments, Inc., on the indefiniteness standards in the patent statute. 35 U.S.C. § 112(b). The...more
PTAB May Not Cancel Claims on the Grounds of Indefiniteness in an IPR Proceeding - In Samsung Electronics America v. Prisua Engineering Corp., Appeal No. 19-1169, the Federal Circuit held that the Patent Trial and Appeal...more
The PTAB Cannot Approve or Deny Certificates of Correction - In Honeywell International, Inc. v. Arkema Inc., Arkema France, Appeal Nos. 2018-1151, -1153, the Patent Trial and Appeal Board (“Board”) does not have the...more