CAFC reminds applicants to be wary of functionally defined genus claims
| July 22, 2014
AbbVie Deutschland GMBH & CO., KG et al., v. Janssen Biotech, Inc.
July 1, 2014
Panel: Lourie, O’Malley, and Chen. Opinion by Lourie. Concurring opinion by O’Malley.
Summary
Functionally defined genus claims can be inherently vulnerable to invalidity challenge for lack of written description, especially in technology fields that are highly unpredictable, where it is difficult to establish a correlation between structure and function for the whole genus or to predict what would be covered by the functionally claimed genus. Functionally defined claims can meet the written description requirement if a reasonable structure-function correlation is established, whether by the inventor as described in the specification or known in the art at the time of the filing date.
Disavowal of Claim Terms is a Stringent Hurdle to Overcome, which must be “Clear and Unmistakable” Disavowal to Limit the Scope of Claims
| August 14, 2013
Plantronics, Inc. v. Aliph, inc. and Aliphcom, Inc.
July 31, 2013
Panel: Rader, O’Malley and Wallach. Opinion by Wallach.
Summary
This is a patent infringement suit by Plantronics against Aliph. Plantronics is owner of US Patent 5,712,453 (‘453 patent) entitled, “Concha Headset Stabilizer.” This is a concha-type headset to anchor in a user’s ear for use in a telephone receiver.
The district court granted-in-part summary judgment for Aliph, for noninfringement and invalidity. After appeal, the Federal Circuit reversed-in-part, vacated in part and remanded for further proceedings. More specifically, the Federal Circuit reversed the summary judgment of noninfringement and invalidity. The discussion below will focus on the issue of noninfringement.
Tags: claim construction > drawings > prosecution history estoppel > restriction > species
Amending to exclude a species via a negative limitation may violate the written description requirement
| August 7, 2013
In re Bimeda Research & Development Limited
July 25, 2013
Panel: Rader, Clevenger, Prost. Opinion by Clevenger. Concurrence by Rader.
Summary:
The court held a negative limitation to exclude a genus does not provide 112, first paragraph written description support to claim a negative limitation that excludes a species, which species was never mentioned in the application.
Tags: genus > negative limitation > species > written description
