On May 18, 2023, the U.S. Supreme Court released its long-awaited decision in Amgen Inc. v. Sanofi,[1] which touches on a formal requirement for patentability, the enablement requirement. In a unanimous ruling, the Supreme Court held that where a patent claims an entire genus, the specification must enable one skilled in the art to make …
Category: 112
35 U.S. Code § 112 – Specification.
(a)In General.—
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
(b)Conclusion.—
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
(c)Form.—
A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.
(d)Reference in Dependent Forms.—
Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
(e)Reference in Multiple Dependent Form.—
A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.
(f)Element in Claim for a Combination.—
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Rule Change for PTAB Post-Grant Claim Construction
On October 11, 2018, the USPTO published in the Federal Register a rule change, 83 F.R. 51340, to take effect today, November 13, 2018. For all AIA post-grant petitions (IPRs, PGRs, and CBMs) filed on or after this date, the broadest reasonable interpretation (BRI) standard will no longer be used in claim construction for these …
Fed Circuit Watch: PTAB Error to Not Consider Arguments in Reply Brief
On August 27, 2018, the Court of Appeals for the Federal Circuit handed down Ericsson Inc. v. Intellectual Ventures I LLC,[1] in which the rules played an important role in decisions made in the case. The facts are as follows. Intellectual Ventures I owns U.S. Patent No. 5,602,831 (‘831), entitled “Optimizing packet size to eliminate …
Fed Circuit Watch: Enabling Scope of Design Patent Claims Expands – Greatly
In a potentially ground-breaking decision in design patent prosecution, the Court of Appeals for the Federal Circuit handed down In re Maatita,[1] on August 20, 2018. The facts are as follows. Ron Maatita filed a design patent application with the USPTO, Serial No. 29/404,677, claiming an athletic shoe sole design. As with all design patent …
Fed Circuit Watch: Dropped Priority Claim Invalidates Patent
On April 19, 2018, the Court of Appeals for the Federal Circuit handed down Droplets, Inc. v. E*Trade Bank,[1] in a case dealing with the formal issue of preparing a proper claim of priority in the specification. The absence of one will cause major problems downstream, as it did for Droplets, Inc. The facts are …
Fed Circuit Watch: Plain Claim Language Not Narrowed Unless Patentee Explicitly Disclaims Scope
An interesting study in organic chemistry appeared at the Federal Circuit. On April 16, 2018, a Fed Circuit panel in Sumitomo Dainippon Pharma Co., Ltd. v. Emcure Pharm. Ltd.,[1] held that plain claim language will be construed narrowly absent the patentee’s clear disclaimer limiting its scope. First a primer on stereochemistry, which is the study …
Fed Circuit Watch: Unreasonably Broad PTAB Claim Construction Reversed
On March 19, 2018, the Court of Appeals for the Federal Circuit rejected, in In re Power Integrations, Inc.,[1] a PTAB decision finding that claims were invalidated as anticipated as unreasonably overbroad. The claim construction was subject in an ex parte reexamination of Power Integrations’ U.S. Patent No. 6,249,876 (‘876). ‘876 is directed to “Frequency …
Fed Circuit Watch: Written Description From Earlier-Filed PCT with Species Claim Sufficient Support for Later-Filed Genus Claim
On March 14, 2018, the Court of Appeals for the Federal Circuit ruled on Hologic, Inc. v. Smith & Nephew, Inc.,[1] which deals with many areas in patents, including foreign applications, priority claims, 35 U.S.C. §103, 35 U.S.C. §112, and pre-AIA treatment for examination. This case was heard before a panel composing of Judges Newman, …
Fed Circuit Watch: Well-Prepared Lexicography Dooms Claim Term as Obvious
This, unfortunately, was a bad week for Steuben Foods, Inc., since this is the second case it lost at the Federal Circuit against the same adversary, Nestlé Foods. This time, in Nestle USA, Inc. v. Steuben Foods, Inc.,[1] the Court of Appeals for the Federal Circuit, on March 13, 2018, ruled that Steuben Foods could …
Fed Circuit Watch: PTAB Not Bound by Fed Circuit Precedent
On March 1, 2018, in a fairly convoluted and highly fractured decision, the Court of Appeals for the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) was not bound to collateral estoppel principles which form a long line of Fed Circuit case precedence. That case is Knowles Elecs. LLC v. Cirrus Logic, …