Patent Law Weblog
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- Apple v. Squires: USPTO Director Has Unlimited Discretion on IPR Institution
- The Ghost in the Machine: Why GenAI Can Be Both a Brilliant Researcher and a Terrible Advocate
- Bayer Files Suit Against Trio of COVID-19 Vaccine Makers
- Allen v. Cooper (4th Cir. 2026)
- To Require an Inventor ID, or Not to Require an Inventor ID – That Is the Question
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Category: Written Description
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By Donald Zuhn –- After reflecting upon the events of the past twelve months, Patent Docs presents its 11th annual list of top patent stories. For 2017, we identified nineteen stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and…
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By Kevin E. Noonan – Last month, the Federal Circuit rendered a decision in Amgen Inc. v. Sanofi that brought clarity to how the Court (and U.S. Patent and Trademark Office) should apply the written description requirement in 35 U.S.C. § 112(a) to properly circumscribe the scope of claims to monoclonal antibodies. As a bonus, the…
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By Kevin E. Noonan – Detection of paternal cell-free fetal DNA (cffDNA) in maternal blood (the technology at issue in Ariosa v. Sequenom) was in a different incarnation the subject of an interference between professors at two universities; the decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board in favor of Dennis…
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By Kevin E. Noonan — Before the Supreme Court's recent forays into the topic of subject matter eligibility in patent law, the most contentious line of cases (from the Federal Circuit) concerned the written description requirement of Section 112. Indeed, some (like former Chief Judge Rader) believed that the statute does not contain a separate…
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By Joseph Herndon — On February 10, 2016, the Federal Circuit issued a nonprecedential opinion in a case captioned Driessen v. Sony Music Entertainment, Best Buy Stores, Fye, & Target Corp. addressing issues related to means-plus-function claims and written description. While the decision is nonprecedential, it serves as a reminder to provide detailed descriptions of…
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By Kevin E. Noonan — Mistakes happen; there is even a book, entitled Human Error, that discusses how and why they happen. The Federal Circuit addressed the consequences of human error (or perhaps more accurately, instances where there was a less-than-perfect understanding of the chemical structure of a claimed invention) in a surprisingly lenient fashion…
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By Michael Borella — Many patent attorneys have a visceral, disapproving reaction to negative claim limitations — elements that specify what a claim does not cover. While a line of Federal Circuit cases has established that negative limitations are acceptable in some situations, there still is a wide gap between claiming "a binary value that…
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Broad Claim Terms and Inadequate Support in Specification Render Patent Invalid By Joseph Herndon — In Media Rights Technologies, Inc. v. Capital One Financial Corp. (September 4, 2015), the Federal Circuit first transformed a broadly described element in a claim into a means-plus-function claim term, and then found the disclosure to be inadequate for the…
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By Andrew Williams — Last week, on September 2, 2014, Accord Healthcare, Inc. ("Accord") filed what appears to be the second-ever Post-Grant Review ("PGR") (see Petition). This PGR was for U.S. Patent No. 8,598,219 ("the '219 Patent"), which is jointly assigned to Helsinn Healthcare S.A. and Roche Palo Alto, LLC (collectively "Helsinn"). As a reminder, PGRs…
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Absent Description of Representative Species to Support Entire Genus, Functionally Defined Genus Claim Lacked Adequate Written Description By Donald Zuhn — Last week, in AbbVie Deutschland GmbH v. Janssen Biotech, Inc., the Federal Circuit affirmed judgments by the District Court for the District of Massachusetts in infringement and interference actions involving AbbVie Deutschland GmbH &…
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