Posts Tagged: "inherent disclosure"

CAFC reverses Summary Judgment on inherent anticipation, affirms no Inequitable Conduct

It is inappropriate for a trial court to discount material expert testimony so as to weigh the evidence in favor of a party seeking summary judgment. The presence of a genuine dispute precludes summary judgment in such cases. … Failure to disclose arguments concerning claims of a different scope in a different patent application was not inequitable conduct when differences were apparent to the Examiner.

Joseph Robinson & Robert Schaffer

December 23, 2016

Federal Circuit Clarifies Doctrine of Inherent Disclosure

Under the doctrine of inherent disclosure, it is not necessary for an earlier application to explicitly describe the later patent. There is adequate written description to support a later patent where it is undisputed that the invention inherently described in an earlier application was the same subject matter included in the claims of the later patent.

Joseph Robinson & Robert Schaffer

September 30, 2016