Posts Tagged: written description


‘Substantially Equivalent’ Disclosure May Satisfy Written Description Requirement Under Certain Circumstances

The Federal Circuit recently affirmed in part and reversed in part a district court decision holding that Actavis Laboratories FL, Inc.’s (“Actavis’s”) generic Abbreviated New …

Claimed Method As a Whole Must Be Described to Satisfy Written Description Requirement

The Federal Circuit recently affirmed a Patent Trial and Appeal Board (Board) decision finding that Dr. Stephen Quake and Dr. Christina Fan’s (collectively, “Quake”) asserted claims …

PTAB Overturned on Criticality of Broadened Claim Term in Reissue

Global IP Holdings, LLC, the owner of U.S. Patent No. 8,690,233, achieved a victory with the Federal Circuit vacating a decision of the Board and remanding for …

Mission Impossible? How U.S. Drafters Can Minimize Support/Clarity Issues Under Article 84 EPC

When drafting Patent Cooperation Treaty (PCT) applications, or applications intended to be prosecuted abroad, a U.S. drafter inevitably faces the challenge of providing a description in …
By Enrica Bruno
4 months ago 0

Federal Circuit Deems Written Description Requirement Satisfied if Specification Identifies the Claimed Invention in a Definite Way

The United States Court of Appeals for the Federal Circuit recently issued a ruling reversing a district court’s grant of summary judgment of non-infringement and invalidity …

Federal Circuit Corrects District Court’s Claim Construction

The United Stated Court of Appeals for the Federal Circuit recently held that a district court erred in its claim construction and vacated the district court’s …

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 …
By Zachary Silbersher
8 months ago 2

Even If New Matter, Entire Application Relevant to Assessing Compliance with Written Description Requirement

Several weeks ago, in a non-precedential opinion, the Court of Appeals for the Federal Circuit issued a decision in In re: David Tropp, which vacated and remanded …
By Gene Quinn & Steve Brachmann
9 months ago 1

Supreme Court Denies Cert in Two-Way Media v. Comcast, Refuses Another 101 Case

The U.S. Supreme Court denied a petition for writ of certiorari in Two-Way Media Ltd. v. Comcast Cable Communications, refusing to hear yet another appeal in …
By Gene Quinn & Steve Brachmann
11 months ago 11

Time Warner Asks CAFC to Vacate $139.8M Reasonable Royalty Awarded to Sprint

John O’Quinn, partner at Kirkland & Ellis and counsel representing Time Warner at the Federal Circuit, argued that the entire verdict should be vacated, not just the …
By Gene Quinn & Steve Brachmann
11 months ago 1

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 …
By Gene Quinn
1 year ago 1

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 …
By Ryan Kenny
1 year ago 5

Patents Invalidated for Lack of Written Description

Disclosure of one way to attach or position a roof assembly (a species) did not provide an adequate written description of other ways to attach or position …

Patenting Antibodies: Written Description Considerations in Antibody Patents

The Amgen v. Sanofi decision put most functional antibody claims into question, including epitope and competitive binding claims, as well as antibody claims based on a newly …
By Li Feng & Stacy Lewis
1 year ago 2

Written Description Support for Claimed Range Requires More than Broad Disclosure

Appellant General Hospital Corp. (“GHC”) appealed the Board’s dismissal of an interference because the claims of its involved patent application lacked sufficient written description. The disclosure …