With patents, everything starts and ends with the claims which means that the specification, the arguments presented during prosecution and all of the patent applicant’s efforts affect the language of the claims. For example, a patent specification must enable one of ordinary skill in the art to make and use the invention as recited in the claims. Alcon Research Ltd. v. … [Read more...]
A patent disclosure must enable the claims in that it must teach one of ordinary skill in the art to make and use the claimed invention. The patent disclosure must provide a set of instructions, recipe or roadmap so that others may exploit the patent at the end of the patent’s term.
Boston University's patent claim invalidated for failing to enable its full scope In Boston University v. Everlight Electronics (Fed. Cir. 2018), the Federal Circuit invalidated a patent claim for failing to enable the full scope of the claimed invention. In particular, the claim contemplated six (6) combinations based on two factors. The first factor had two options. The … [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...]
Law on enablement requirement A patent specification must enable one of ordinary skill in the art to make and use the full scope of the claimed invention without undue experimentation under 35 USC 112, first paragraph. Otherwise, such claim is invalid for failing to satisfy the enablement requirement. The enablement doctrine prevents both inadequate disclosure of an … [Read more...]
Facts of case In the following case, the patent claim at issue is directed to computer hard disk drive storage systems. Magsil v. Hitachi (Fed. Cir. 2012). Without boring everyone with the technical specifics, the patent claim defined the claimed invention by describing the end result, namely, a change in resistance in a disk storage device by at least 10% at room temperature. … [Read more...]