Patent Prosecution Update
September 2014
Defining Definiteness: Nautilus and Further Exercise
For more than a decade, the Federal Circuit has construed 35 U.S.C. § 112, ¶ 2, to require that claims be “amenable to construction” and not “insolubly ambiguous.” See Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). In June 2014, however, the Supreme Court declared that these standards are apt to “breed lower court confusion,” and thus a refinement of this standard was warranted. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2130 (2014). According to the Court, “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Id. at 2124. Since the Nautilus decision, the Federal Circuit has had further opportunities to address the definiteness requirement of pre-AIA 35 U.S.C. § 112, ¶ 2 (now 35 U.S.C. § 112(b)). Each decision has important implications for patent practitioners. More
How Far Is Too Far? Unreasonable Claim Constructions Can Lead to Sanctions
Once a patent-infringement lawsuit is filed, much time and effort is devoted by the parties and the court to arrive at the appropriate interpretation of the claims. But how important is it to think about claim-construction arguments before filing suit? In Source Vagabond Systems Ltd. v. Hydrapak, Inc., the Federal Circuit recently reiterated that it is very important for counsel—and the patent owner—to ensure that all infringement arguments raised are based on claim-construction positions that are reasonable and legally sound. 753 F.3d 1291, 1301 (Fed. Cir. 2014). Failure to do so, which can also amount to a failure to perform a reasonable prefiling investigation, can lead to a violation of Rule 11 that may result in sanctions, including expenses and attorney’s fees. More
Defining Definiteness: Nautilus and Further Exercise
For more than a decade, the Federal Circuit has construed 35 U.S.C. § 112, ¶ 2, to require that claims be “amenable to construction” and not “insolubly ambiguous.” See Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). In June 2014, however, the Supreme Court declared that these standards are apt to “breed lower court confusion,” and thus a refinement of this standard was warranted. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2130 (2014). According to the Court, “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Id. at 2124. Since the Nautilus decision, the Federal Circuit has had further opportunities to address the definiteness requirement of pre-AIA 35 U.S.C. § 112, ¶ 2 (now 35 U.S.C. § 112(b)). Each decision has important implications for patent practitioners. More
How Far Is Too Far? Unreasonable Claim Constructions Can Lead to Sanctions
Once a patent-infringement lawsuit is filed, much time and effort is devoted by the parties and the court to arrive at the appropriate interpretation of the claims. But how important is it to think about claim-construction arguments before filing suit? In Source Vagabond Systems Ltd. v. Hydrapak, Inc., the Federal Circuit recently reiterated that it is very important for counsel—and the patent owner—to ensure that all infringement arguments raised are based on claim-construction positions that are reasonable and legally sound. 753 F.3d 1291, 1301 (Fed. Cir. 2014). Failure to do so, which can also amount to a failure to perform a reasonable prefiling investigation, can lead to a violation of Rule 11 that may result in sanctions, including expenses and attorney’s fees. More
Design Patents
Protecting Your “Look and Feel” When Your Store Is Made of Bytes, Not Bricks: Using Design Patents for Graphical User Interfaces
Read
Rule Review
PTAB May Be Obliged to Consider New Rejection to Avoid Inconsistent Results
Read
EPO Practice
Getting the Best out of the EPO During the International Phase of a PCT Application for U.S. Applicants
Read
At the Federal Circuit
ScriptPro’s Claims Not a Prescription for Invalidity
Read
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Eric P. Raciti, Editor-in-Chief
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Clara N. Jiménez, Associate Editor
Eric P. Raciti, Editor-in-Chief
J. Derek McCorquindale, Associate Editor
Clara N. Jiménez, Associate Editor
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