NOVOZYMES A/S v. DUPONT NUTRITION BIOSCIENCES (Fed. Cir. 2013) (P) – Written description support from a myriad of disclosed potential variants

by Steve Driskill | Jul 22, 2013 | [sub] written description, Adequate Disclosure

A claim must be considered as a whole for purposes of written description support, rather than as a collection of individually supported limitations. While the disclosure of a myriad of unclaimed or even inoperative embodiments is not necessarily invalidating, the...

CONVOLVE v. COMPAQ (Fed. Cir. 2013) (NP) – Lack of enablement for overbreadth

by Steve Driskill | Jul 1, 2013 | [sub] enablement, Adequate Disclosure

While somewhat of a fact specific case, the main lesson here is to be careful on how broadly you craft your claims and to provide at least some dependent claims that more specifically target working embodiments. As the court remind us, “[b]y choosing such broad claim...

WYETH v. ABBOTT LABORATORIES (Fed. Cir. 2013) (P) – Excessive even if routine experimentation

by Steve Driskill | Jun 26, 2013 | [sub] enablement, Adequate Disclosure

The need to sift through tens of thousands of potential variations on the disclosed embodiments to determine their viability, with each taking on the order of weeks in a field that is generally unpredictable, constitutes excessive and therefore undue experimentation,...

ATELIERS DE LA HAUTE-GARONNE v. BROETJE AUTOMATION USA INC. (Fed. Cir. 2013) (P) – Best mode

by Steve Driskill | May 21, 2013 | [sub] best mode, Adequate Disclosure

The best mode requirement is satisfied when the inventor includes the preferred mode in the specification. “There is no requirement in 35 USC 112 that an applicant point out which of his embodiments he considers his best mode; that the disclosure includes the best...

ANVIK CORPORATION v. NIKON PRECISION, INC. (Fed. Cir. 2013) (NP) – Best mode

by Steve Driskill | Mar 22, 2013 | [sub] best mode, Adequate Disclosure

First and foremost, the AIA statutory amendment that removed best mode from the list of invalidating conditions for issued patents was not given retroactive effect for cases that were filed before the new statute was enacted. Second, the question of whether the best...

CEPHALON, INC. v. WATSON PHARMACEUTICALS, INC. (Fed. Cir. 2013) (P) – Undue experimentation

by Steve Driskill | Feb 14, 2013 | [sub] enablement, Adequate Disclosure

“[T]he mere potential need for clinical work, without more, is not dispositive.” This opinion gives a great recap of the law surrounding undue experimentation and would be a good one to consult if the issue ever arises. Background / Facts: The patents here relate to...