For the past few years, hot patent topics have revolved around the issue of patent eligible subject matter, especially for software patent. The Supreme Court has handed down a number of opinions attempting to give broad based guidance to the lower courts and the USPTO. The lower courts and the USPTO have been left to promulgate rules and decide cases based on those broad … [Read more...]
Invalidity is charge made by accused infringers to avoid liability for patent infringement. A patent may be held invalid for many reasons such as anticipation, obviousness and failure to comply with the written description and enablement requirements.
An opinion of patent counsel regarding patent infringement is relevant to the intent of an alleged infringer and may be useful to mitigate trebling of damages. This case expands the value of opinion of counsel to also mitigate liability for inducement of infringement. Patent infringement may be found through direct infringement. This occurs when a person personally makes, … [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...]
In a patent, broader claims are generally more desireable. However, the breadth of the claim must be balanced with its validity. If the claim is too broad, then the courts will hold that the claimed invention is anticipated by the prior art or an obvious variant of the prior art. If the claim is too narrow, then the patent might avoid anticipation by the prior art or an … [Read more...]