ranges : CAFC Alert

Beware of Relying on a Single Example, Since It May Limit Claim Scope

Ryan Chirnomas | October 17, 2013

Sunovion Pharmaceuticals, Inc. v. Teva Pharmaceuticals, et al.

September 26, 2013

Panel:  Lourie, Schall and Reyna.  Opinion by Lourie


In this case arising from an ANDA, the claims recited the vague term of “essentially free of”, which was undefined by the specification.  Although probably never intended to limit the scope of the claims, the CAFC held that the content of the sole substantive example in the specification and a declaration citing this—which was heavily relied upon during prosecution—defined the scope of this ambiguous term.  However, the patent owner managed to win the litigation nonetheless, due to the CAFC recognizing the ineffectiveness of an unconventional “certification” of non-infringement to the district court which contradicted the defendant’s FDA filing.

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Can an open-ended claim range be enabled?

Bill Schertler | August 22, 2012

Magsil Corp. and MIT v. Hitachi Global

August 14, 2012

Panel:  Rader, O’Malley, Reyna.  Opinion by Rader.


The U.S. District Court for the District of Delaware granted summary judgment finding claims 1-5, 23, 26 and 28 of appellants’ U.S. Patent No. 5,629,922 (the ‘922 patent) invalid as a matter of law for lack of enablement and therefore non-infringed.  At issue was whether the specification enabled the broad scope of the claimed “open-ended” range of values having a lower threshold, but no upper limit, defined by “a change in the resistance by at least 10% at room temperature”.

Magsil appealed the district court’s decision.  On appeal, the CAFC affirmed the district court’s finding that claims 1-5, 23, 26 and 28 of the ‘922 patent are invalid for lack of enablement.

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Another per se rule bites the dust. A reference that discloses a range encompassing a somewhat narrower claimed range may not be sufficient to establish a prima facie case of obviousness

Lee Wright | April 12, 2012

Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc.

August 23, 2011

Panel:  Lourie, Plager and Dyk.  Opinion by Lourie.  Concurrence-in-part and dissent-in part by Dyk.


This article concludes a three-part series regarding this important case from last year.   For part 1, click here.  For part 2, click here.  This final article discusses the following questions:

Question 1:  Does a broad range necessarily render obvious a narrower range falling within that broader range?

Answer 1:  No.

Question 2:  Do all minor chemical differences always lead to a conclusion of obviousness?

Answer 2:  No.

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Lack of demonstrated criticality of narrowly claimed range fails to overcome anticipation rejection based on broadly disclosed prior art range

Ken Salen | February 22, 2012

ClearValue, Inc. v. Pearl River Polymers, Inc.

February 17, 2012

Panel:  Prost, Schall and Moore.  Opinion by Moore.


ClearValue accused Pearl River of infringing U.S. Patent No. 6,120,690 (’690 patent).  The jury found that the ’690 patent was valid and indirectly infringed.  The 5th Circuit District court denied Pearl River’s subsequent motions for judgment as a matter of law (JMOL) of invalidity and noninfringement of the ‘690 patent. Pearl River appealed the district court’s denial of its motions for JMOL.  Holding that the jury’s verdict was not supported by substantial evidence, the CAFC reversed the denial of the motion for JMOL of invalidity (i.e., the CAFC held the patent-in-suit invalid), concluding that a prior art limitation of “less than 150 ppm” anticipates a claimed range of “less than or equal to 50” unless criticality of the narrowly claimed range is demonstrated.

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