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Exploring the Law of Embodiments After Phillips
The decision by the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) in July 2005 reaffirmed and amplified many of the court's prior decisions addressing various aspects of patent claim construction. In particular, it emphasized the critical role of the specification in determining what the claim means and stated that the specification 'is the single best guide to the meaning of a disputed term.' While the specification provides a number of sign posts or guides to interpreting a claim, one of the most important considerations is whether and how the patentee may have limited the invention to certain embodiments or may have distinguished the invention from prior inventions. It is important, therefore, for both patent prosecutors and litigators to understand how the Federal Circuit has approached the issue of limiting claims in a post-Phillips world based on the embodiments disclosed in the specification.
In general, since Phillips the Federal Circuit has been willing to limit the claim terms of a patent: 1) when the specification referred to the proposed limitation as 'the present invention,' 2) when the specification defined 'the focus of the invention' and the claim required the proposed limitation in order to fit into the 'focus of the invention'; or 3) when the specification only disclosed certain embodiments and failed to account for alternative embodiments. In contrast, the Federal Circuit has refused to limit a claim term to the embodiments disclosed in the specification when the specification envisioned alternative embodiments not containing the proposed limitation. Accordingly, it is critical for patent prosecutors to include a specification in the application that contains, if at all possible, alternative embodiments or indicates that the disclosed embodiment is 'merely a preferred embodiment of the claimed invention.'
Why So Many Great Lawyers Stink at Business Development and What Law Firms Are Doing About It
Why is it that those who are best skilled at advocating for others are ill-equipped at advocating for their own skills and what to do about it?
Bankruptcy Sales: Finding a Diamond In the Rough
There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.
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.
A Lawyer's System for Active Reading
Active reading comprises many daily tasks lawyers engage in, including highlighting, annotating, note taking, comparing and searching texts. It demands more than flipping or turning pages.
Blockchain Domains: New Developments for Brand Owners
Blockchain domain names offer decentralized alternatives to traditional DNS-based domain names, promising enhanced security, privacy and censorship resistance. However, these benefits come with significant challenges, particularly for brand owners seeking to protect their trademarks in these new digital spaces.