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...

ALCON RESEARCH, LTD. v. BARR LABORATORIES, INC. (Fed. Cir. 2014) (P) – Enablement over broad range of variables and parameters

by Steve Driskill | Mar 18, 2014 | [sub] enablement, Adequate Disclosure

The fact that the claims encompass many variables and parameters does not by itself require undue experimentation. Adjusting variables may be relevant to optimizing a given implementation, but optimization may not be required in order to practice the claimed invention...

IN RE HOFFMANN (Fed. Cir. 2014) (NP) – Acknowledging need for further experimentation

by Steve Driskill | Feb 25, 2014 | [sub] enablement, Adequate Disclosure

While a fact and technology specific case, it is worth noting that characterizing certain calculations as “preliminary” and discussing the need for further experimentation may be detrimental to enablement. Background / Facts: The application on appeal here from...

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,...