Mark Einsiedel

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Considerations For Applicants and Practitioners Due to Recent EPC Guidelines Regarding Description Amendment Requirements

By Mark Einsiedel on March 7, 2022 Posted in Patents

Article 84 of the European Patent Convention (EPC) requires that the claims of a European patent application “shall define the matter for which protection is sought” and “shall be clear and concise and be supported by the description.”[i] To assist practitioners and patent examiners, the European Patent Office (EPO) provides patent examination guidelines interpreting the … Continue Reading

Reasonable Expectation of Success’ Analysis Must Be Tied to Claim Limitations

By Mark Einsiedel on December 16, 2021 Posted in Federal Circuit, Patent Trial and Appeal Board

One common rationale used to support an obviousness argument is that the patented solution would have been “obvious to try.” The Supreme Court has stated that where “there are a finite number of identified, predictable solutions” for solving a problem and that “a person of ordinary skill has good reason to pursue the known options,” … Continue Reading

Use of Infringement Disclaimer to Preserve Favorable PTAB Decision

By Mark Einsiedel on March 4, 2021 Posted in Patents

In a recent precedential opinion, ABS Global Inc. v. Cytonome/ST, LLC, 984 F.3d 1017 (Fed. Cir. 2021), the Federal Circuit held that the disclaimer of a right to appeal a district court’s summary judgment of non-infringement mooted a petitioner’s appeal of the Patent Trial and Appeal Board’s (PTAB) final written decision in an inter partes … Continue Reading

Proving That a Negative Claim Limitation Is Disclosed by the Prior Art: Takeaways From Two Recent Federal Circuit Opinions

By Mark Einsiedel on September 25, 2019 Posted in Patent

Occasionally, a patentee will seek to define its invention with claims that recite a negative claim limitation – a specialized category of claim element that recites an element that is expressly and deliberately excluded.[1] By way of example, a claim directed to a stool with the limitation that the stool is “devoid of a backrest … Continue Reading