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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.
The DOJ's Corporate Enforcement Policy: One Year Later
The DOJ's Criminal Division issued three declinations since the issuance of the revised CEP a year ago. Review of these cases gives insight into DOJ's implementation of the new policy in practice.
Use of Deferred Prosecution Agreements In White Collar Investigations
This article discusses the practical and policy reasons for the use of DPAs and NPAs in white-collar criminal investigations, and considers the NDAA's new reporting provision and its relationship with other efforts to enhance transparency in DOJ decision-making.
The DOJ's New Parameters for Evaluating Corporate Compliance Programs
The parameters set forth in the DOJ's memorandum have implications not only for the government's evaluation of compliance programs in the context of criminal charging decisions, but also for how defense counsel structure their conference-room advocacy seeking declinations or lesser sanctions in both criminal and civil investigations.
CLE Shouldn't Be the Only Mandatory Training for Attorneys
Each stage of an attorney's career offers opportunities for a curriculum that addresses both the individual's and the firm's need to drive success.
Discovery of Claim Construction and Infringement Analysis May be Compelled Prior to a Markman Hearing
A defendant in a patent infringement suit may, during discovery and prior to a <i>Markman</i> hearing, compel the plaintiff to produce claim charts, claim constructions, and element-by-element infringement analyses.