X2Y ATTENUATORS, LLC v. ITC (Fed. Cir. 2014) (P) – Labeling certain features as “essential” or “universal” to all embodiments constitutes disavowal

by | Jul 7, 2014 | [sub] specification, Estoppel / Disclaimer

A statement directly or indirectly incorporated into the specification that the presence of a particular feature is “universal to all the embodiments” or is “an essential element among all embodiments or connotations of the invention” constitutes a clear and...

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 | 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...

HILL-ROM SERVICES, INC. v. STRYKER CORPORATION (Fed. Cir. 2014) (P) – Prosecution statements in unrelated applications cannot be used to interpret claims

by | Jun 27, 2014 | [sub] prosecution history, Estoppel / Disclaimer

This case reaffirms Pfizer v. Ranbaxy that “statements made during prosecution of [a] later, unrelated [] patent cannot be used to interpret claims of [another] patent.” Further, because prosecution focuses on “what [a reference] discloses” whereas claim construction...