January 2014
Written Description Support for Genus Claims in Mechanical Inventions: When Is a Single Species Enough?
The inquiry into the sufficiency of written description support turns on whether the disclosure of the application reasonably conveys to those skilled in the art that the inventor has possession of the claimed subject matter as of the filing date.
See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). But when the claim is directed to a genus, is disclosure of a single species sufficient to support the claim? That issue was addressed by
Synthes USA, LLC v. Spinal Kinetics, Inc., 734 F.3d 1332, 1338
(Fed. Cir. 2013). More
New Simpler and Easier PPH Formalities
The new Global Patent Prosecution Highway (PPH) pilot is the next step in an effort to harmonize and simplify the PPH platform. The pilot program launched on January 6, 2014, features a single-form and common set of guidelines by all the participating offices. The current list of participating offices includes Australia, Canada, Denmark, Finland, Hungary, Iceland, Israel, Japan, Korea, Norway, Portugal, Russia, Spain, Sweden, the United Kingdom, the United States, and the Nordic Patent Institute. It is expected that other offices that already participate in the PPH or PPH 2.0 programs will join Global PPH as results from the pilot become available. Under Global PPH, any earlier, positive results by any of these offices are now available as a basis for PPH at another participating office, so long as the applications share a common earliest date and support the claimed subject
matter. Additional information, including the most up-to-date list of participating offices, is available at
http://www.jpo.go.jp/ppph-portal/globalpph.htm. The PPH was discussed in the November 2013 edition of
Full Disclosure here.
Supreme Court News
The U.S. Supreme Court agreed on January 10, 2014, to hear a patent case involving indefiniteness of claim language, the first case to reach the high court on this issue in
decades. The Court granted certiorari in the case of
Nautilus, Inc. v. Biosig Instruments, Inc. (No. 13-369), in which Nautilus raised on petition the following questions:
- Does the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations—so long as the ambiguity is not “insoluble” by a court—defeat the statutory definiteness requirement?
- Does the presumption of validity after grant dilute the requirement of definiteness?
The Supreme Court also granted certiorari in the case of Akamai Technologies, Inc. v. Limelight Networks, Inc. (No. 12-786), covered in the October 2012 edition of Full Disclosure. Click here. The Court will consider whether a party may be liable for infringement under either 35 U.S.C. § 271(a) or (b) where two or more entities join together to perform all of the steps of a process claim.
Certiorari has already been granted in Alice Corp. Pty. Ltd. v. CLS Bank International (No. 13-298), regarding patent-eligible subject matter. The CLS Bank decision was covered in the June 2013 edition of Full Disclosure. Click here.