Amgen Inc. v. Sanofi
Functional limitations in a claim to a composition of matter may result in claim breadth that is not fully enabled if undue experimentation is required to determine the scope of the functional limitations.
Results for enablement
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Promega Corp. v. Life Tech. Corp.
The Fed. Circuit invalidates claims under 35 U.S.C. § 112, 1st paragraph, finding that the specification does not enable a skilled artisan to practice the full breadth of ‘comprising’ claim scope.
Edwards Lifesciences AG v. CoreValve Inc.
The enablement requirement may be met by animal tests or in vitro data. Title 35 does not demand that human testing occur within the confines of Patent and Trademark Office proceedings.
MagSil Corp. v. Hitachi Global Storage Technologies Inc.
When a patent specification only enables one of ordinary skill in the art to achieve a small subset of a claimed range without undue experimentation, the patentee is not entitled to claim an open-ended range.
Green Edge Enterprises LLC v. Rubber Mulch Etc. LLC
An inventor avoids summary judgment for violation of the best mode requirement despite referring to a propriety product used in the preferred embodiment by a nonexistent trade name.
Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc.
An “offer to sell … within the United States” occurs when a company makes an offer, whether made inside or outside of the United States, to sell a product that the buyer will use in the United States. In addition, an “offer to sell” occurs when the product specified in the contract infringes a patent, notwithstanding the state of the product ultimately delivered.
Hyatt v. Doll
Evidence not submitted by an applicant during prosecution or appeal is not admissible as a matter of right, and may not be admissible at all in a subsequent court appeal. The Federal Circuit will likely apply an equity-like standard when considering the admissibility of such evidence.
In re ‘318 Patent Infringement Litigation
The Federal Circuit finds that a stated hypothesis and proposed testing for a treatment method is not enough to establish utility.
David H. Sitrick v. Dreamworks, LLC
The Federal Circuit continues to reinforce the requirement that the full scope of a claim be enabled for the claim to be valid under the first paragraph of 35 U.S.C. § 112. If a disclosure does not enable a device that is covered by a claim, an infringement action asserting that claim will likely result in its invalidation for lack of enablement.
Liebel-Flarsheim Company and Mallinckrodt, Inc., v. Medrad, Inc.
The Court considers the extent to which patent claims should be interpreted to cover embodiments that are not enabled by the specification.