News & Analysis as of

Enablement Inquiries Claim Construction Appeals

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Clarifies that Enablement of Prior Art is a Separate (and Distinct) Inquiry from Enablement of Claims in a Patent

In an appeal from an inter partes review, the Federal Circuit recently clarified that the enablement inquiry applied to prior art references in the context of an anticipation defense differs from the enablement inquiry...more

McDermott Will & Emery

Complex or Not Written Description Is Evaluated Against Claims

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit reversed a district court’s ruling of invalidity for lack of written description, finding that the district court erred in its analysis of written description because patents...more

McDermott Will & Emery

Amending a Range? Better Enable It

McDermott Will & Emery on

In a post-grant review appeal, the US Court of Appeals for the Federal Circuit explained that patent claims reciting a range must enable the full scope of that range and, under the Administrative Procedure Act (APA), the...more

Bradley Arant Boult Cummings LLP

Is SCOTUS Looking to Change the Enablement Requirement for Patents?

The Supreme Court is set to hear oral arguments in Amgen, Inc. v. Sanofi (No. 21-757) on Monday, March 27, 2023. The highly contentious question before the high court focuses what an applicant must show to meet the enablement...more

McDermott Will & Emery

Broad Genus of HCV Compounds Wasn’t Enabled or Described

McDermott Will & Emery on

In a case relating to compounds for the treatment of the Hepatitis C virus (HCV), the US Court of Appeals for the Federal Circuit upheld a district court’s grant of judgment as a matter of law (JMOL) for lack of enablement...more

Knobbe Martens

Federal Circuit Review - October 2019

Knobbe Martens on

The PTAB Cannot Approve or Deny Certificates of Correction - In Honeywell International, Inc. v. Arkema Inc., Arkema France, Appeal Nos. 2018-1151, -1153, the Patent Trial and Appeal Board (“Board”) does not have the...more

McDermott Will & Emery

Enablement: Multiple Measurement Methods Can Lead to the Same Result - Ethicon Endo-Surgery, Inc. v. Covidien, Inc.

McDermott Will & Emery on

Addressing the issues of indefiniteness and non-infringement for both utility and design patents, the U.S. Court of Appeals for the Federal Circuit reversed and vacated in part the district court’s grant of summary judgment...more

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