Posts Tagged: patent claims


Changes in Patent Language to Ensure Eligibility Under Alice

When a rule becomes a target, it ceases to be a good rule.  In the three years since the Supreme Court issued its opinion in Alice, there …

Strengthening Patent Value Throughout the Patent Prosecution Flow

Patents allow you to protect your inventions, license the use of the inventions of others, and introduce additional revenue streams to your business. Patents also require investments …
By Mike McLean
14 days ago 0

A Primer on Indefiniteness and Means Plus Function

Means plus function claiming allows the drafter to claim the invention based on functionality rather than the more traditional (and preferred) claiming technique that employs structure within …
By Gene Quinn
30 days ago 2

Open Prosecution as a Strategy to Counter IPRs Filed by Defendants

One of the most valuable benefits of Open Prosecution is when a patentee is forced to enforce a patent. If the patentee filed for a Continuation, it …
By Alec Schibanoff
1 month ago 10

Patentee Fails to Prove Equivalents did not Ensnare the Prior Art

Crafting a proper hypothetical claim is a prerequisite to whether a theory of infringement under the doctrine of equivalents would also ensnare the prior art. The burden …

A Repeatable Approach To Portfolio Monetization

To successfully monetize a patent portfolio, it is incredibly important to identify value within it, and to put in the work to prove to third parties and …
By Mike McLean
3 months ago 3

Inquiry into Unexpectedness is Essential Even for Determining Obviousness in Inherency

The Federal Circuit reversed. Indeed, it found that the Board committed legal error by improperly relying on inherency to find obviousness and in its analysis of motivation …

Beware of Conditional Limitations when Drafting Patent Claims

Buried in the claim language, conditional limitations may be a vulnerability in an otherwise valuable claim. A conditional limitation is a claim feature that depends on a …
By Vladimir Lozan
4 months ago 24

Federal Circuit Reverses Rule 12(b)(6) Eligibility Dismissal Under First Step of Alice

In Visual Memory LLC v. NVIDIA Corp., a district court dismissed a patent infringement complaint under FRCP 12(b)(6) for failure to state a claim, because the patent …

Testing a Patent Claim against an Abstract Idea, in Response to 35 USC §101 Rejection

One promising approach is to argue that the claims are directed to a specific technological solution to a specific technological problem, as has been successful in the …
By Christopher Hall
4 months ago 8

The Immunotherapy Patent Landscape: Types of patent claims for immunotherapeutic inventions

Immunotherapy has emerged as one of the most promising mechanisms to combat diseases like cancer and microbial infections. Since 2000, multiple antibody drugs have reached blockbuster status, including …

Inherency in Obviousness – What is the Correct Standard?

Although the distinction between inherency in obviousness and anticipation is sometimes blurred, the two concepts are quite different and a claim may be inherently anticipated without being …

Breadth through Specificity: Supporting Alternative Embodiments with Multiple Examples in Patent Applications

Two recent cases, The Medicines Co. v. Mylan, Inc and Skedco, Inc. v. Strategic Operations, Inc., illustrate that the patentee’s specification is key to determining whether …
By Matthew Kinnier & Emily Dubuc
5 months ago 3

Generic Examples of Claimed Compounds Do Not Satisfy Enablement Requirement

On June 21, 2017, In Storer v. Clark, the Federal Circuit affirmed a Patent Trial and Appeal Board’s interference decision, which awarded priority to Clark’s pending application (…

Prepare for More Estoppel if the Supreme Court Reverses Federal Circuit on Partial IPR Institutions

Partial institutions lessen the value of estoppel because the petitioner avoids estoppel on claims that were challenged but not instituted. The PTAB never issues a final written …
By Jason German & Wayne Stacy
6 months ago 1