Posts Tagged: enablement
McRO Patent Upheld Again at Federal Circuit, But Not Infringed
The U.S. Court of Appeals for the Federal Circuit, in a precedential decision authored by Judge Taranto, today affirmed-in-part, vacated-in-part and remanded a decision of the …
Federal Circuit Invalidity Determination for Idenix Underscores Continuing Intra-Circuit Split
One day before the now-famous Arthrex decision was issued, the U.S. Court of Appeals for the Federal Circuit (CAFC) decided an appeal by Idenix Pharmaceuticals LLC …
The PPH Program at the USPTO: Favorable Stats Don’t Alleviate Big Risks
Since 2006, the U.S. Patent and Trademark Office (USPTO) has participated in the Patent Prosecution Highway Pilot Program (the PPH Program). Generally, the program is designed to …
Pinning False Blame of Lack of Enablement In Issued Patents On the USPTO
Last week, the House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet, held an oversight hearing on the U.S. Patent and Trademark Office (USPTO) with …
Anatomy of a Valuable Patent: Building on the Structural Uniqueness of an Invention
From a conceptual standpoint, it would seem logical to assume that writing text to describe a particular invention ought to be easy for the inventor of that …
District of Delaware Makes it Harder to Corner the Market on Antibody Patents in MorphoSys v. Janssen
Patents covering an antibody are often claimed by the antibody’s function (the residues where it binds to the antigen) rather than its structure (amino-acid sequence). This …
Delaware Jury Awards $24 Million Royalty to Bio-Rad and University of Chicago, Finds Patent Infringement Willful
A jury in the United Stated Federal District Court for the District of Delaware recently delivered a verdict awarding nearly $24 million dollars in reasonable royalty damages to …
How to Write a Patent Application
Writing a patent application is not as easy as many think. Indeed, the concept of usefully describing the invention, which on its face seems easy enough to …
Which Invalidity Avenue to Take: Inter Partes Review Verses Post-Grant Review
The United States Patent and Trademark Office (USPTO) provides invalidity tools via inter partes review (IPR) and post-grant review (PGR), but which route is better? ... PGRs are …
CAFC invalidates Boston University patent claim for lack of enablement
“In sum, Defendants showed that epitaxially growing a monocrystalline layer directly on an amorphous layer would have required undue experimentation—indeed, that it is impossible,” the Federal …
Idenix Loses Patent on HCV Treatment that Supported $2.54 Billion Infringement Verdict
In invalidating the Idenix patent, the Delaware district court effectively overturns what had been the largest award for royalty damages in a U.S. patent infringement case …
Patent Drafting: Understanding the Enablement Requirement
The enablement requirement is specifically aimed at ensuring the claimed invention is described with sufficient detail so the relevant person of skill in the art or technology …
Patent Drafting 101: Going a Mile Wide and Deep with Variations in a Patent Application
You absolutely want to file a patent application with a description that is a mile wide — that part is good — but you also need to also drill …
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 (…
Patentability: The Adequate Description Requirement of 35 U.S.C. 112
The crux of this so-called adequate description requirement is that once the first four patentability requirements are satisfied the applicant still must describe the invention with enough …
