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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.'
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.
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.
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.
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.
Compliance Officers: Recent Regulatory Guidance and Enforcement Actions and Mitigating the Risk of Personal Liability
This article explores legal developments over the past year that may impact compliance officer personal liability.