News & Analysis as of

Nautilus Inc. v. Biosig Instruments

Breadth is not Indefiniteness; If the Relevant Skilled Artisan has Reasonable Certainty as to What is Covered the Claim is Not...

In BASF Corp. v. Johnson Matthey Inc., [2016-1770] (November 20, 2017), the Federal Circuit reversed the judgment of invalidity for indefiniteness of U.S. Patent No. 8,524,185, which describes and claims systems for...more

Lessons for Life Science and Medical Device Companies Post-Nautilus

by Robins Kaplan LLP on

Under the U.S. Patent laws, claims must particularly point out and distinctly claim what the inventor understands her invention to be. Up until three years ago, the inquiry for determining indefiniteness was to ask whether...more

Asserted Claims Found Indefinite in Electrical Connectors Investigation

by Jones Day on

In a recently issued claim construction order, Chief Administrative Law Judge Bullock held that terms included in all asserted claims are indefinite. He accordingly found the asserted claims invalid, stayed the Investigation,...more

Am I Being Clear Enough? – PTAB Reaffirms Lower Pre-Issuance Threshold for Indefiniteness in Ex Parte McAward

On August 25, 2017, the Patent Trial and Appeal Board issued a precedential opinion in Ex Parte McAward, reaffirming the Patent Office’s use of a lower pre-issuance threshold for indefiniteness distinct from the Supreme...more

USPTO Maintains Standard for Indefiniteness in Rare Precedential Opinion

by Orrick - IP Landscape on

Decision on Appeal, Ex parte McAward et al., No. 2015-006416 (P.T.A.B. August 25, 2017) (Judges Linda E. Horner, Annette R. Reimers and Nathan A. Engels) - The Supreme Court’s decision in Nautilus, Inc. v. Biosig...more

In Precedential Decision, Board Says Packard, Not Nautilus, Governs Indefiniteness During Pre-Issuance Examination

by Jones Day on

...In a recent (and rare) precedential decision, the Board reaffirmed that the Supreme Court’s decision in Nautilus does not change “the USPTO’s long-standing approach to indefiniteness” in the context of pre-issuance...more

Using Functional Language to Define the Capabilities of Structure

35 USC § 112(b) requires that the specification of a patent “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention". The failure of...more

Can You Be Reasonably Certain a Water Balloon Is Substantially Filled? Indefiniteness in Tinnus v. Telebrands

In Tinnus Enterprises, LLV v. Telebrands Enterprises (Fed. Cir. 2016-1410), the CAFC considered whether a claim requiring that a container (think water balloon) be “substantially filled” was indefinite under 35 USC §112....more

Eli Lilly v. Teva – Expert Testimony and the Indefiniteness Inquiry

In the patent world, claim scope depends on the meaning given to the individual words in the claim. If the meaning of a word in the claim is not clear, the claim may be attacked as invalid under the indefiniteness standard....more

Pharmaceutical Preservative Patent Survives Indefiniteness Challenge - Senju Pharma. Co. Ltd. v. Lupin Ltd., (D.N.J. November 18,...

by McDermott Will & Emery on

Applying the Supreme Court of the United States’ new indefiniteness standard from Nautilus v. Biosig, the U.S. District Court for the District of New Jersey held three claim terms in a patent on a stabilized, opthalmic...more

It’s All “Relative”, But No Different Here Under the New Nautilus Indefiniteness Standard

by Orrick - IP Landscape on

Order Denying Defendant’s Motion For Summary Judgement As To Indefiniteness, Silicon Laboratories, Inc. v. Cresta Technology Corporation. Case No. 14-cv-03227-PSG (Judge Paul S. Grewal) - In one of his most famous...more

Clarifying the Obscure (Claim Indefiniteness) - The Dow Chemical Co. v. Nova Chemicals Corp. et al.

by McDermott Will & Emery on

Clarifying the application of the indefiniteness standard set forth in the Supreme Court’s Nautilus case, a divided U.S. Court of Appeals for the Federal Circuit denied a combined petition for rehearing and rehearing en banc...more

The Federal Circuit Trend to Strengthen the Standard for Definiteness

by Fish & Richardson on

In Dow Chemical Co. v. Nova Chemicals Corp., 803 F.3d 620 (Fed. Cir. 2015), the Federal Circuit directly acknowledged that the Supreme Court’s recent ruling in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120...more

What are the Rules on Indefiniteness of a Patent Specification under 35 USC § 112?

While the question was answered by the Supreme Court in Nautilus, Inc. v. Biosig Instruments, 134 S. Ct. 2120 (2014), the Federal Circuit, in The Dow Chemical Company v. Nova Chemicals Corporation (Canada), (2014-1431,...more

Top Stories of 2015: #11 to #15

After reflecting upon the events of the past twelve months, Patent Docs presents its ninth annual list of top patent stories. For 2015, we identified twenty stories that were covered on Patent Docs last year that we believe...more

New Patent Claim Construction Review Standard

by Fenwick & West LLP on

In early 2015, the U.S. Supreme Court changed the standard of review for patent claim construction with its decision in Teva Pharmaceuticals USA v. Sandoz Inc., 135 S. Ct. 831 (2015) (Teva I). Previously, the U.S. Court of...more

Federal Circuit Review | September 2015

by Knobbe Martens on

Federal Circuit Remands Record Damages Award For New Trial On Extraterritorial Sales - In Carnegie Mellon University v. Marvell Technology Group, Ltd., Appeal No. 2014-1492, the Federal Circuit reversed a damages award...more

Clarifying the Post-Nautilus Indefiniteness Standard - The Dow Chemical Co. v. NOVA Chemicals Corp. et al.

by McDermott Will & Emery on

Addressing the post-Nautilus indefiniteness standard, the U.S. Court of Appeals for the Federal Circuit reversed a jury’s finding that the claims-at-issue are not indefinite and similarly reversed an associated order granting...more

Court Finds Dow Claims Clearly Indefinite

by Foley & Lardner LLP on

In Dow Chemical Co. v. Nova Chemicals Corp., the Federal Circuit held claims reciting a limitation that could be calculated in several ways indefinite where the patent claims, specification, and prosecution history failed to...more

A Defined Numerical Parameter Can Still Be Indefinite, If It’s Not Clear How to Measure It

In The Dow Chemical Co. v. Nova Chemicals Corporation (Canada), [2014-1431, 2014-1462] (August 28, 2015) the Federal Circuit applied the change of law exception to reject Dow’s bid for supplemental damages for infringements...more

Nautilus Standard Sinks Dow Patents

by Foley & Lardner LLP on

Dow Chemical Company (“Dow”) lost a ruling that competitor NOVA Chemical Corporation and NOVA Chemicals Inc. (collectively “NOVA”) infringed claims of two Dow patents when the Federal Circuit applied the U.S. Supreme Court’s...more

Delaware Judges Are Finding Patent Claims Indefinite Post-Nautilus

by Foley & Lardner LLP on

It has been a little more than a year since the Supreme Court rendered its decision in Nautilus, lowering the standard for finding patent claim terms indefinite. Many commentators at that time predicted the decision would...more

Business Litigation Report - July 2015

Introduction - Issue preclusion is a familiar concept to most practicing attorneys. Under this doctrine, “later courts should honor the first actual decision of a matter that has been actually litigated.” Charles Alan...more

Federal Circuit Tackles Claim Construction Review under New Standard

The More Things Change (Lighting Ballast Control LLC v. Philips Electronics North America), the More They Stay the Same (Teva Pharmaceuticals USA, Inc. v. Sandoz Inc.) - On June 18, 2015, the Federal Circuit handed down...more

No Substantial Change in Standard for Indefiniteness Under “Reasonable Certainty” Test - Biosig Instruments, Inc. v. Nautilus,...

by McDermott Will & Emery on

In an opinion addressing the standard for indefiniteness in view of the Supreme Court of the United States’ 2014 “reasonable certainty” test, the U.S. Court of Appeals for the Federal Circuit maintained its reversal of the...more

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