• Interplay of enablement with written description

    As to written description, IPWatchdog contains the following:

    The third description requirement is the written description requirement, which is also found in 35 U.S.C. §112(a).
    The written description requirement is separate and distinct from the enablement requirement, although related in
    important ways. The written description requirement serves a teaching function, as a “quid pro quo” in which the
    public is given meaningful disclosure in exchange for being excluded from practicing the invention for a limited period of time.

    Still confused as to what this means? If you are confused you are understanding well. To be sure, the definition of the written description requirement is quite elusive. For generations the written description requirement had been confined to making sure that what was originally filed in the patent application adequately defined the full parameters of the invention being claimed. Today, the written description requirement means much more, but the Federal Circuit has yet to be able to articulate the requirements in a truly easy to explain way.

    Perhaps the key to understanding the difference between enablement and the written description requirement is
    that you can bootstrap knowledge of one of skill in the art into your application for enablement purposes, but
    no such bootstrapping is allowable under the written description requirement. If you leave something out
    it is not a part of your written description even if someone of skill in the art would understand that you left
    something out. In this sense the written description requirement is a “four corners” requirement. What you include
    in your patent application defines the possible extent of the exclusive rights you will obtain, nothing more.
    Once it is known what is in the four corners of your patent application and, therefore, the invention that you
    actually possess, the law then turns to the enablement question and asks whether one of skill in the art would know
    how to make and use the invention. In this regard the written description requirement and the enablement requirement
    are similar and directly related, yet separate requirements.

    link: http://www.ipwatchdog.com/2017/06/24/patentability-adequate-description-requirement-35-u-s-c-112/id=85039/

    One recalls the recent CAFC case Storer v. Clark, which included text:


    The Board agreed with Clark’s position, and held that
    the S1 provisional’s description of the 2´-keto precursor, in
    combination with the Matsuda reference, was insufficient
    to enable and thereby to establish possession of the
    2´F(down) methyl(up) compound of claim 1 before Clark’s
    priority date.
    The Board stated, correctly, that for new
    chemical compounds the specification must provide sufficient
    guidance that undue experimentation is not required
    to obtain the new compounds.

    link: http://ipbiz.blogspot.com/2017/06/cafc-affirms-ptab-in-storer-v-clark.html

    Separately, from blawgsearch on June 26, 2017:

    ***
    As to recent cases involving “lack of written description,”

    apart from Storer, 2017 U.S. App. LEXIS 10945 (June 21, 2017): The Board agreed with Clark’s position, and held that the S1 provisional’s description of the 2´-keto precursor, in combination with the Matsuda reference, was insufficient to enable and thereby to establish possession of the 2´F(down) methyl(up) compound of claim 1 before Clark’s priority date. The Board stated, correctly, that for new chemical compounds the specification must provide sufficient guidance that undue experimentation is not required to obtain the new compounds. ,

    RIVERA v. ITC . 857 F.3d 1315; 2017 U.S. App. LEXIS 8931 . “For the foregoing reasons, we affirm the Commission’s conclusion that claims 5-7, 18, and 20 are invalid for lack of written description”

    Cisco v. Cirrex, 856 F.3d 997; 2017 U.S. App. LEXIS 8264; 122 U.S.P.Q.2D (BNA) 1595: “Substantial evidence supports the Board’s finding of lack of written description support for the diverting element claims. Because we affirm the Board’s finding of lack of written description support, we need not and do not reach the Board’s alternate grounds for unpatentability of the diverting element claims.”

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  • Supreme Court Rocks the Trademark Office in ‘Slants’ Case

    After a streak of six patent decisions uniformly overruling the Federal Circuit, and for the first time all term, the Supreme Court finally handed the Federal Circuit a win this week. In its landmark ruling in Matal v. Tam (formerly Lee v. Tam), the U.S. Supreme Court struck down the restriction on the registration of marks that “disparage” under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). Justice Samuel A. Alito Jr. wrote unanimously for the eight justices in holding that Section…

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  • Arbitrator’s ‘interpretation’ of unconscionable fee agreement gives Jenner & Block millions in unearned contingency fees

    Oracle and Parallel Networks settled that arbitration in January 2013. So, more than four years after Jenner & Block lost the Oracle case and abandoned its client, they received nearly $500,000 in additional contingency fees from Parallel Network’s settlement with Oracle – despite the fact that they were not representing Parallel Networks when this January 2013 settlement with Oracle was negotiated and concluded (in point of fact, in January 2013 Jenner & Block was suing Parallel…

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  • George Chaclas Joins Burns & Levinson as Partner in IP Group

    Burns & Levinson announced this week that George Chaclas has joined the firm as a partner in its Intellectual Property (IP) Group. Chaclas, who has over 19 years of experience developing IP strategy for Fortune 100 and industry-leading companies, world-renowned academic institutions, startups, and entrepreneurs, was previously with Adler Pollock & Sheehan in Providence, RI. Also joining the firm from Adler Pollock are associate Daniel McGrath and patent agent Katherine Larson.

    The…

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  • Conference & CLE Calendar

    June 27, 2017 – “CRISPR Confusion: A Legal and Practical Analysis for IP Professionals” (Technology Transfer Tactics) – 1:00 to 2:00 pm (Eastern) June 27, 2017 – “Essential Developments in Patent Subject Matter Eligibility: What Lies Ahead in 2017?” (T…

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  • BETWEEN…THROUGH

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    BETWEEN…THROUGH

    $$ Turning now to FIG. 3C, between and through mutually spaced apart plates 109, 111, extend substantially cylindrical pins 113, 115, 117…

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  • Invalidating patents at PTAB

    An article by Rochelle Dreyfuss in SLATE includedVersata Software learned the difference between the PTAB and the courts the hard way. In court, it successfully enforced a patent on software for determining prices. Later on, the PTAB revoked the claims…

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