Patent Prosecution Update
November 2015
Drafters Beware: Does Your Specification Enable the Prior Art?
Shortly before Halloween, the Federal Circuit gave patent drafters a (modest) scare. At issue in In re Morsa, No. 2015-1107 (Fed. Cir. Oct. 19, 2015), was whether a prior art reference was enabled. The Federal Circuit agreed with the U.S. Patent and Trademark Office (USPTO) that it was enabled, but its reasoning was supported primarily by statements in the applicant’s own specification. With Halloween now behind us, practitioners should bear the case in mind when drafting applications, but the case is not a horror story. More
Means-Plus-Function Claims and the Search for Adequate Structural Support
In Media Rights Technologies, Inc. v. Capital One Financial Corp., No. 2014-1218 (Fed. Cir. Sept. 4, 2015), the Federal Circuit affirmed the district court’s determination of invalidity for indefiniteness. It found the claims at issue to be means-plus-function claims, and lacking adequate support in the specification for the two disputed claim terms’ recited functions. This case follows in the wake of Williamson v. Citrix Online, LLC, 792 F. 3d 1339 (Fed. Cir. 2015) (en banc), where the en banc Federal Circuit expressly overruled the “strong” presumption that limitations lacking the word “means” are not subject to 35 U.S.C. § 112, ¶ 6 (pre-AIA). More
Drafters Beware: Does Your Specification Enable the Prior Art?
Shortly before Halloween, the Federal Circuit gave patent drafters a (modest) scare. At issue in In re Morsa, No. 2015-1107 (Fed. Cir. Oct. 19, 2015), was whether a prior art reference was enabled. The Federal Circuit agreed with the U.S. Patent and Trademark Office (USPTO) that it was enabled, but its reasoning was supported primarily by statements in the applicant’s own specification. With Halloween now behind us, practitioners should bear the case in mind when drafting applications, but the case is not a horror story. More
Means-Plus-Function Claims and the Search for Adequate Structural Support
In Media Rights Technologies, Inc. v. Capital One Financial Corp., No. 2014-1218 (Fed. Cir. Sept. 4, 2015), the Federal Circuit affirmed the district court’s determination of invalidity for indefiniteness. It found the claims at issue to be means-plus-function claims, and lacking adequate support in the specification for the two disputed claim terms’ recited functions. This case follows in the wake of Williamson v. Citrix Online, LLC, 792 F. 3d 1339 (Fed. Cir. 2015) (en banc), where the en banc Federal Circuit expressly overruled the “strong” presumption that limitations lacking the word “means” are not subject to 35 U.S.C. § 112, ¶ 6 (pre-AIA). More
IP5 Offices
Language and Translations
Read
Design Patents
Understanding the Hague System—Six Months Later: How’s It Going So Far?
Read
Rule Review
USPTO Changes Its Practice Regarding Corrections to Foreign Priority Claims
Read
EPO Practice
Infringement of Second Medical Use Claims in the United Kingdom
Read
At the Federal Circuit
A U.S. Patent’s § 102(e) Reference Date
Read
 |
| Follow us on |  |
 |
 |
DISCLAIMER: The information contained herein is intended to convey general information only and should not be construed as a legal opinion or as legal advice. The firm disclaims liability for any errors or omissions and readers should not take any action that relies upon the information contained in this newsletter. You should consult your own lawyer concerning your own situation and any specific legal questions. This promotional newsletter does not establish any form of attorney-client relationship with our firm or with any of our attorneys.
If you have any questions or need additional information, please contact:
Eric P. Raciti, Editor-in-Chief
J. Derek McCorquindale, Associate Editor
Clara N. Jiménez, Associate Editor
Eric P. Raciti, Editor-in-Chief
J. Derek McCorquindale, Associate Editor
Clara N. Jiménez, Associate Editor
Finnegan publishes newsletters, blogs, and IP Updates that provide news, statistics, and analysis of recent court decisions. Our newsletters and blogs focus on Federal Circuit practice, PTAB practice, trademark and copyright law, patent prosecution and counseling, and IP licensing. To sign up to receive newsletters, blog posts, or IP Updates, please click here.
Atlanta ▪ Boston ▪ London ▪ Palo Alto ▪ Reston ▪ Seoul ▪ Shanghai ▪ Taipei ▪ Tokyo ▪ Washington, DC
www.finnegan.com
Copyright © 2015 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP | All rights reserved