News & Analysis as of

United States Patent and Trademark Office Indefiniteness Claim Construction

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Patterson Belknap Webb & Tyler LLP

Claims May Bend But Are Not Broken: Judge Locke Rejects Indefiniteness Arguments in Fiber Optic Cables Case

In a patent-infringement case involving fiber-optic-cable assemblies, Magistrate Judge Steven I. Locke (E.D.N.Y.) recently rejected defendants’ arguments that two terms in the patent claims were indefinite under 35 U.S.C. §...more

Sheppard Mullin Richter & Hampton LLP

2023 Federal Circuit Case Summaries

We are excited to share Sheppard Mullin’s inaugural quarterly report on key Federal Circuit decisions. The Spring 2023 Quarterly Report provides summaries of most key patent law-related decisions from January 1, 2023 to March...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2022 #4

Hunting Titan, Inc. v. DynaEnergetics Europe GMBH, Appeal Nos. 2020-2163, -2191 (Fed. Cir. March 24, 2022) - In a notable review of the USPTO’s new Precedential Opinions Panel, the Federal Circuit discussed the...more

Rothwell, Figg, Ernst & Manbeck, P.C.

The USPTO Clarifies its Approach to Indefiniteness in AIA Post-Grant Proceedings

Last month, in January 2021, the United States Patent and Trademark Office (“USPTO”) published a memorandum (the “January 2021 Memorandum”) clarifying how it will analyze claims for indefiniteness in AIA post-grant...more

McDermott Will & Emery

PTO: Board to Align Indefiniteness Approach in AIA and District Court Proceedings

McDermott Will & Emery on

On January 6, 2021, US Patent and Trademark Office (PTO) Director Andrei Iancu, Commissioner for Patents Andrew Hirshfeld and Chief Administrative Patent Judge Scott Boalick issued a memorandum to the members of the Patent...more

BakerHostetler

The USPTO Harmonizes the Indefiniteness Standard Used for AIA Trials Making it More Difficult to Find a Claim Indefinite

BakerHostetler on

Recently, the United States Patent and Trademark Office (USPTO) issued a memorandum to the Patent Trial and Appeal Board (PTAB) requiring the PTAB to change the standard used to assess the definiteness requirement under 35...more

Haug Partners LLP

USPTO Updates Indefiniteness Standard in AIA Post-Grant Proceedings to Match Those of the District Court Under Nautilus

Haug Partners LLP on

On January 6, 2021, the United States Patent and Trademark Office (“USPTO”) published a Memorandum that changed the indefiniteness analysis under 35 U.S.C. §112 that the Patent Trial and Appeal Board (“PTAB”) applies in...more

Foley & Lardner LLP

District Court Finds PK Targets Of VIMOVO Patents Indefinite

Foley & Lardner LLP on

In an opinion issued November 19, 2018, Judge Chesler of the U.S. District Court for the District of New Jersey found two Orange Book-listed patents for VIMOVO® invalid for indefiniteness in the way certain pharmacokinetic...more

Jones Day

After SAS, Indefinite Claims Can Be A Definite Problem For IPR Petitioners

Jones Day on

The definiteness requirement for patent claims is set forth in Section 112(b), mandating that a patent specification conclude with one or more claims “particularly pointing out and distinctly claiming subject matter which the...more

Fenwick & West LLP

Intellectual Property Bulletin - Summer 2018

Fenwick & West LLP on

In This Issue - US Taxation of IP After Tax Reform - U.S. taxation of intellectual property has become astoundingly more complex after the Tax Cuts and Jobs Act. The new rules are so complex that the IRS and Treasury...more

Jones Day

Indefiniteness Standard Applicable in PGRs: Reasonably Certain or Clear?

Jones Day on

Whether a claim is indefinite under 35 U.S.C. § 112 is analyzed under different standards by District Courts and the PTAB. District Courts apply the standard articulated by the Supreme Court in Nautilus requiring a patent’s...more

Schwabe, Williamson & Wyatt PC

2017 and Early 2018 Supreme Court and Precedential Patent Cases From the Federal Circuit

Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more

Knobbe Martens

Federal Circuit Review - November 2017

Knobbe Martens on

Fractured Federal Circuit Holds Patent Owner Does Not Bear Burden of Persuasion in IPR Motions to Amend - In Aqua Products, Inc. v. Matal, Appeal No. 2015-1177, the Federal Circuit, sitting en banc, held that a patent...more

Jones Day

In Precedential Decision, Board Says Packard, Not Nautilus, Governs Indefiniteness During Pre-Issuance Examination

Jones Day on

...In a recent (and rare) precedential decision, the Board reaffirmed that the Supreme Court’s decision in Nautilus does not change “the USPTO’s long-standing approach to indefiniteness” in the context of pre-issuance...more

McDonnell Boehnen Hulbert & Berghoff LLP

In re McAward (PTAB 2017)

Patent law can be apparently inconsistent, particularly where claim construction is concerned. For example, claim construction standards that apply in district court are not the same standards that the U.S. Patent and...more

Schwabe, Williamson & Wyatt PC

Summaries of All Supreme Court and Precedential Federal Circuit Patent Cases Decided Since Jun. 1, 2016

This paper is based on reports on precedential patent cases decided by the Federal Circuit distributed by Peter Heuser on a weekly basis. ...more

Schwabe, Williamson & Wyatt PC

Recent Developments In Patent Law May 17, 2017

Update to TC Heartland LLC v. Kraft Foods Group Brands LLC, Case No. 16-341 (May 22, 2017) - In an 8-0 opinion written by Justice Thomas (Justice Gorsuch did not participate), the Supreme Court rules that a defendant...more

Knobbe Martens

Federal Circuit Review | February 2016

Knobbe Martens on

Federal Circuit Dismisses an Appeal of an Inter Partes Reexamination for Lack of Standing Where the Appellant Failed to Establish that it was the Successor-in-Interest to the Original Petitioner - In Agilent...more

WilmerHale

Federal Circuit Patent Updates - August 2015

WilmerHale on

The Dow Chemical Company v. Nova Chemicals Corporation (No. 2014-1431, -1462, 8/28/15) (Prost, Dyk, Wallach). Dyk, J. Reversing award of supplemental damages. "We hold that the intervening change in the law of...more

Knobbe Martens

Federal Circuit Review | April 2015

Knobbe Martens on

No Recovery Of Lost Profits From Related Companies’ Activities - In WARSAW ORTHOPEDIC, INC. v. NUVASIVE, INC., Appeal Nos. 2013-1576, -1577, the Federal Circuit held that a company was not entitled to lost profits based...more

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