Bottom line: It may be counter-intuitive, but use of the word “invention” when drafting a patent application is a disfavored practice. For the most part, use of the word “invention” may narrow the patent protection afforded under a patent and may not broaden the scope of the claims. The reason is that if a patent repeatedly states that the invention IS X, then courts have … [Read more...]
The patent claim defines the scope of patent protection afforded under the patent. The patent claim may be an apparatus or method claim.
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Bottom line: The importance of winning at the district court level for patent litigation has significantly increased due to a recent U.S. Supreme Court case, specifically, Teva Pharamceuticals USA, Inc. v. Sandoz, Inc. (S.Ct. 2015). Since 1995, when a decision at the district court hinged on claim construction (i.e., defining the terms of a patent claim), the appellate court … [Read more...]
The Federal Circuit in Takeda v. Zydus (Fed. Cir. Feb. 20, 2014) resolved issues in relation to claim construction, infringement and invalidity. The patent was directed to an orally ingestable tablet that disintegrated in your mouth where the formulation contains granules small enough (i.e., 400 µm or less) to avoid a feeling of roughness in the patient’s mouth upon … [Read more...]
The scope of patent protection for a patent is defined by claims which are located at the end of the patent. One of the difficulties in determining whether infringement occurs revolves around patent claim construction which determines the meaning of terms or language in the claims. As you might suspect, claim terms can have different meanings to different people. However, … [Read more...]
In Lifescan v. Shasta (Fed. Cir. 2013), the patent owner sold machines and consumables separately. The machines were blood glucose meters, while the consumables were test strips for the blood glucose meters. The patent owner sold the machine at a loss (40% of the time) or gave them away for free (60% of the time) expecting that they would profit on the sales of the test … [Read more...]
The following case illustrates my propensity for limiting my use of what patent attorneys call the means plus function claim limitation. There are particular uses for means plus function limitations but more often than not, they seem to be more trouble than they are worth. I will go over some instances where I think that they are useful down below. Background of means plus … [Read more...]
The following case illustrates the difficulty in being able to predict the outcome of patent litigation. It also provides hints at improving ones patent drafting technique. During patent litigation, the claim terms are construed in light of (1) the plain meaning of the terms, (2) the specification and (3) the prosecution history among other things. In American Piledriver … [Read more...]
Clarity is one of the basic goals for claim drafting. The patent application is a tool to explain terms used in the claims. A response to an official action of the Patent Office revolves around the claims. The following case is an example of a claim which was not clear. The claim language at issue was “a release means for retaining …” Baran v. Medical Device Technologies, … [Read more...]