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Be Wary of What You Ask for: The Dangers of Improper Claim Drafting
Some inventions are easily characterized as a pure process, machine, manufacture, or composition of matter and lend themselves to a single independent claim and a simple set of dependent claims. Many inventions, however, involve two or more of the statutory categories of subject matter, and require several independent claims, often creatively drafted, with mapped sets of dependent claims for complete coverage. Can a claim that straddles the line between the statutory categories of subject matter or that does not technically distinguish the invention from other claims be found invalid as an improperly drafted claim?
In a pair of recent decisions, the U.S. Court of Appeals for the Federal Circuit ('Federal Circuit') has emphasized the importance of drafting claims that meet all of the statutory requirements, including the more technical requirements set forth in 35 U.S.C. '112. In IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005), the court held that a claim was indefinite under 35 U.S.C. '112, second paragraph, and therefore invalid, because it attempted to cover both an apparatus and method for using the apparatus. In Pfizer Inc. v. Ranbaxy Laboratories Ltd., 457 F.3d 1284 (Fed. Cir. 2006), the court focused on the requirement of the fourth paragraph of 35 U.S.C. '112, that a claim in dependent form must specify a further limitation of the subject matter claimed, and struck a dependent claim which failed to do so. These two cases are discussed in detail below.
IPXL Holdings
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Legal Possession: What Does It Mean?
Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.
The Stranger to the Deed Rule
In 1987, a unanimous Court of Appeals reaffirmed the vitality of the "stranger to the deed" rule, which holds that if a grantor executes a deed to a grantee purporting to create an easement in a third party, the easement is invalid. Daniello v. Wagner, decided by the Second Department on November 29th, makes it clear that not all grantors (or their lawyers) have received the Court of Appeals' message, suggesting that the rule needs re-examination.