Posts Tagged ‘Phillips v. AWH’

Saffran v. J&J – When Defining Equals Disclaiming

Wednesday, April 17th, 2013

A guest post from Theresa Stadheim of Schwegman Lundberg & Woessner, P.A.

In Bruce N. Saffran, M.D., Ph.D., v. Johnson & Johnson and Cordis Corporation, Appeal No. 2012-1043 (Fed. Cir. April 4, 2013, decision by Lourie), the Federal Circuit reversed an Eastern District of Texas decision and held that the Eastern District of Texas erroneously construed claims of U.S. Patent No. 5,653,760 (“the ‘760 patent”).

The ‘760 patent discloses a method for treating complex bone fractures that used a “single, flexible, minimally porous sheet.” ‘760 patent at col. 7, lines 34-36.  The alleged infringing device was a stent comprised of a mesh with a microscopic layer of polymer coating each strut of the stent.

One of the issues on appeal was the district court’s construction of the term “device.”

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PTO Issues Notice on Improvement in Patent Application Quality – A Very Modest Proposal

Wednesday, January 16th, 2013

On January 15, 2013, the USPTO released a notice – see link below – requesting comments on its suggestions of ways to “improve the quality of issued patents” by improving the quality of application drafting. There are two brief sections in the Notice: “Clarifying the Scope of Claims” and “Clarifying the Meaning of Claim Terms in the Specification.” Since this is a biotech blawg, I will skip the sections relating to software and means-plus-function clauses.

The suggestions in Part A boil down to: (1) Write claims in outline form with elements in lettered or Roman numeral-designated subsections, (2) Minimize or eliminate preambles (the Office wants us to indicate if we think they are limiting, so let’s stop using them), (3) Specifically identify support for claim elements in the specification (No – should only be “necessary”– if at all — when claims are amended – original claims are part of the specification), (4) Indicate whether or not examples are intended to be limiting or “merely illustrative” (Easy one - they are always illustrative).

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