CREATIVE KINGDOMS, LLC v. ITC (Fed. Cir. 2014) (NP) – The specification must supply the novel aspects of an invention in order to constitute adequate enablement

by Steve Driskill | Dec 19, 2014 | [sub] enablement, Adequate Disclosure

Although a specification need not disclose what is well-known in the art, “[i]t is the specification, [and] not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement.” Here, for example,...

PROMEGA CORP v. LIFE TECH (Fed. Cir. 2014) (P) – Open-ended limitations in the body of a claim may exceed the scope enabled by the specification

by Steve Driskill | Dec 15, 2014 | [sub] enablement, Adequate Disclosure

Although use of the term “comprising” in a claim preamble does not render every word and phrase in the claim open-ended, similar language attached to a particular claim limitation in the body of the claim may expand the breadth of that limitation beyond the scope...

ANTARES PHARMA INC. v. MEDAC PHARMA INC. (Fed. Cir. 2014) (P) – Specification must “clearly and unequivocally” disclose invention claimed on reissue as a separate invention

by Steve Driskill | Nov 17, 2014 | [sub] reissue requirements, Adequate Disclosure

The “original patent” requirement is a heightened standard compared to the separate written description requirement in that the specification must “clearly and unequivocally” disclose the particular invention claimed on reissue as a separate invention. Here, for...

SCRIPTPRO, LLC v. INNOVATION ASSOCIATES (Fed. Cir. 2014) (P) – Qualifiers such as “generally” or “broadly” may avoid inference that a list of features is essential

by Steve Driskill | Aug 6, 2014 | [sub] written description, Adequate Disclosure

Although the inclusion of truly essential features may be required for a claim to satisfy the written description requirement, the court acknowledged that “[i]t is common, and often permissible, for particular claims to pick out a subset of the full range of described...

ABBVIE DEUTSCHLAND GMBH & CO. v. JANSSEN BIOTECH, INC. (Fed. Cir. 2014) (P) – Representative species must be diverse when relied upon to satisfy written description of broader genus

by Steve Driskill | Jul 1, 2014 | [sub] written description, Adequate Disclosure

Absent any structural features common to the members of a claimed genus, the specification must disclose representative species that are diverse across the breadth of the claimed genus in order to satisfy the written description requirement. “[A]nalogizing the genus...

TOBINICK v. OLMARKER (Fed. Cir. 2014) (P) – Conflicting descriptions for written description requirement

by Steve Driskill | May 19, 2014 | [sub] written description, Adequate Disclosure

An application need only reasonably convey to one skilled in the art that the inventor had possession of at least one embodiment that meets the claim limitations at issue to satisfy the written description requirement of 35 U.S.C. § 112(a). Conflicting descriptions...