YEDA RESEARCH AND DEVELOPMENT v. ABBOTT GMBH & CO. KG (Fed. Cir. 2016) (P) – Identifying an invention by its known properties may support claims to undisclosed yet inherent properties

by Steve Driskill | Sep 20, 2016 | [sub] written description, Adequate Disclosure

A disclosure that adequately identifies an invention by its known properties may be used to support later claims to undisclosed yet inherent properties. Here, for example, a protein described in a priority application in terms of a partial amino acid sequence and...

SCRIPTPRO LLC v. INNOVATION ASSOCIATES, INC. (Fed. Cir. 2016) (P) – Original claims can provide written description support even for later added claims

by Steve Driskill | Aug 15, 2016 | [sub] written description, Adequate Disclosure

Original claims can provide written description support even for later added claims. Here, for example, the asserted claims were found to be supported by the original disclosure even though the specification focused on a narrower embodiment and even though the...

BAMBERG v. DALVEY (Fed. Cir. 2016) (P) – Distinguishing prior art as “undesired” may limit the scope of the claims

by Steve Driskill | Mar 9, 2016 | [sub] specification, [sub] written description, Adequate Disclosure, Estoppel / Disclaimer

Distinguishing the prior art as “undesired” is equivalent to distinguishing it as “inferior” and may therefore limit the scope of the claims as necessarily excluding the undesired features. Here, for example, a broad claim added during an interference to cover a...

BLUE CALYPSO, LLC. v. GROUPON, INC. (Fed. Cir. 2016) (P) – (1) Mere absence of a claim term from the specification alone does not establish a lack of written description; (2) A reference available only via a personal webpage does not automatically constitute a printed publication

by Steve Driskill | Mar 1, 2016 | [sub] printed publications, [sub] written description, Adequate Disclosure, Prior Art

(1) The PTO must do more than state that a claim term is not literally recited in the specification to establish a lack of written description support for that term. Here, for example, the specification was found to adequately support the terms “endorsement tag” and...

INPHI CORPORATION v. NETLIST, INC. (Fed. Cir. 2015) (P) – A negative limitation is supported by a description of alternative features without articulating advantages

by Steve Driskill | Nov 13, 2015 | [sub] written description, Adequate Disclosure

Negative claim limitations may be supported by the specification’s description of alternative features—even without articulating advantages or disadvantages of each feature—which can constitute a “reason to exclude” under the standard for supporting negative...

PROGRESSIVE CASUALTY v. LIBERTY MUTUAL (Fed. Cir. 2015) (NP) – Disclosure of a genus does not, without more, imply written description support of a particular species

by Steve Driskill | Aug 24, 2015 | [sub] written description, Adequate Disclosure

An application’s disclosure of a genus does not, without more, imply written description support of a particular species. Here, for example, a parent application’s disclosure of a “rating factor” was found to be insufficient to support a child application’s recitation...