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...

GLAXOSMITHKLINE LLC v. BANNER PHARMACAPS, INC. (Fed. Cir. 2014) (P) – Written description support for non-functional limitations

by Steve Driskill | Feb 24, 2014 | [sub] written description, Adequate Disclosure

For non-functional claim limitations, providing a description by structure and process of creation that matches the claimed term is sufficient to satisfy the written description requirement. Background / Facts: The patent being asserted here is directed to the...

REALTIME DATA, LLC v. MORGAN STANLEY (Fed. Cir. 2014) (NP) – Ambiguity as a basis for lack of written description

by Steve Driskill | Jan 27, 2014 | [sub] written description, Adequate Disclosure

At its heart, this case appears to be a cautionary tale of ambiguity being used against the drafting party (in this case, the patentee who is responsible for the content of its application). At the very least, original claim terminology should be consistent with the...

SYNTHES USA, LLC v. SPINAL KINETICS, INC. (Fed. Cir. 2013) (P) – Species written description support for a broader genus

by Steve Driskill | Oct 29, 2013 | [sub] written description, Adequate Disclosure

Although it is possible that a “disclosure of a species may be sufficient written description support for a later claimed genus including that species,” this is not sufficient for the more unpredictable arts. “[T]here are no bright-line rules governing, for example,...