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74 decisions · Patent law

Written Description, Enablement and Indefiniteness (35 U.S.C. § 112)

Section 112 requires the specification to describe the invention and to enable a skilled person to make and use it (§ 112(a)), and the claims to be definite (§ 112(b)). Under § 112(f), a means-plus-function claim covers the structure the specification describes and its equivalents.

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  1. Fed. Cir. · Oct. 7, 2026In re GambleThe Federal Circuit affirmed the Board's decision sustaining the examiner's § 112(b) indefiniteness rejections of all pending claims of the '077 application. Mr. Gamble forfeited any substantive argument both before the Board (by not…
  2. Fed. Cir. · Oct. 2, 2026Pioneer Hi-Bred International, Inc. v. Inari Agriculture, Inc.The Federal Circuit affirmed the Board's determination that the challenged claims were not enabled. The court held that the Board did not err in relying on post-priority experimental data submitted by Pioneer, where the tested variants…
  3. Fed. Cir. · Oct. 1, 2026Satius Holding, LLC v. Samsung Electronics Co., Ltd.The Federal Circuit held that the claims were not indefinite because their scope was reasonably certain even though they covered a scientifically impossible embodiment. The court nevertheless affirmed invalidity because the claims were…
  4. Fed. Cir. · Sept. 30, 2026TEVA PHARMACEUTICALS INTERNATIONAL GMBH v. ELI LILLY AND COMPANYThe Federal Circuit denied both panel rehearing and rehearing en banc. Judge Dyk dissented, arguing the panel's enablement analysis for method claims conflicts with Amgen and permits overbroad functional claiming.
  5. Fed. Cir. · Sept. 30, 2026Wang v. Viking Drill & Tool, Inc.The Federal Circuit affirmed the Board’s finding that the earlier Wang ’808 application did not provide written-description support for the claimed “formed spirally” limitation, so Wang ’808 qualified as prior art. Because substantial…
  6. Fed. Cir. · Aug. 31, 2026Evolved Wireless, LLC v. Samsung Electronics America, Inc.The Federal Circuit affirmed across the board: substantial evidence supported the jury's noninfringement verdict under Evolved's standards-based LTE theory, the Qualcomm license survived termination and continued to bar claims against…
  7. Fed. Cir. · Aug. 31, 2026Exelixis, Inc. v. MSN Laboratories Private Ltd.The Federal Circuit affirmed the finding that the asserted claims of the '439, '440, and '015 patents had adequate written description under § 112(a). The court dismissed as moot MSN's appeal as to claim 3 of the '349 patent and vacated…
  8. Fed. Cir. · Aug. 10, 2026Dental Monitoring SAS v. Align Technology, Inc.The Federal Circuit held that AIA § 102(d)(2) requires substantive entitlement to priority, including § 112(a) written-description support, before a reference patent or published application can use an earlier provisional filing date as…
  9. Fed. Cir. · Aug. 4, 2026Socket Solutions, LLC v. Import Global, LLCThe Federal Circuit held that the district court’s likelihood-of-success analysis rested on erroneous constructions of “backplate” and “pin.” It vacated the preliminary injunction and remanded, also noting that any presumption of…
  10. Fed. Cir. · Aug. 3, 2026MPH Technologies Oy v. Apple Inc.The Federal Circuit rejected the district court's construction limiting the '949 patent family's 'secure' terms to IPSec and 'unique identity' to IPSec-specific SPI values. It also reversed the indefiniteness ruling for the '581 patent…
  11. Fed. Cir. · July 31, 2026RJ TECHNOLOGY LLC v. SAMSUNG ELECTRONICS CO., LTD.The Federal Circuit granted the motion to the extent it dismissed the appeal. The court ordered each party to bear its own costs.
  12. Fed. Cir. · July 30, 2026Schmeisser GmbH v. AC-Unity d.o.o.The Federal Circuit held that the district court erred by finding the distance-related claim terms indefinite; the terms were facially clear, supported by the specification and prosecution history, and measurable with conventional tools.…
  13. ITC · July 17, 2026Certain Mobile Electronic Devices; Inv. No. 337-TA-1432 (Violation)The ALJ found a § 337 violation only as to U.S. Patent No. 11,490,004, concluding that Samsung infringed claims 1 and 10, Maxell proved technical and economic domestic industry, and Samsung failed to prove invalidity. No violation was…
  14. Fed. Cir. · July 9, 2026WYETH LLC v. ASTRAZENECA PHARMACEUTICALS LPThe Federal Circuit affirmed JMOL of invalidity for lack of enablement under § 112(a). The claims required daily administration of a therapeutically effective unit dosage to a patient, and the specifications did not teach how to determine…
  15. Fed. Cir. · July 2, 2026TrackTime, LLC v. Amazon.com Services LLCThe Federal Circuit vacated the indefiniteness ruling on the '978 patent because the district court did not adequately analyze, under intervening Dyfan precedent, whether the full “executable program code” limitations recited sufficient…
  16. Fed. Cir. · July 1, 2026Otsuka America Pharmaceutical, Inc. v. Hetero Labs LimitedThe Federal Circuit affirmed the preliminary injunction, holding that the claim terms “dextromethorphan” and “quinidine” in the asserted weight-to-weight ratio refer to the form administered, including salt forms, supporting Otsuka’s…
  17. Fed. Cir. · June 26, 2026POWER2B, INC. v. SAMSUNG ELECTRONICS CO., LTD.The Federal Circuit dismissed the appeal under Federal Rule of Appellate Procedure 42(b) based on the parties’ agreement. Each side will bear its own costs.
  18. PTAB Director Review · June 24, 2026Apple Inc. v. WeCrevention, Inc.The Director denied institution of Apple’s IPR petition against the ’098 patent in the high-speed memory-module technology area under § 314(a) discretionary authority. The denial turned on Apple’s unexplained inconsistent…
  19. PTAB Director Review · June 24, 2026Apple Inc. v. WeCrevention, Inc.The Director denied institution under § 314(a) discretion for Apple’s IPR against WeCrevention’s memory-related Patent No. 10,998,017, finding Apple’s PTAB claim-construction position on “input/output unit” irreconcilable with its…
  20. PTAB Director Review · June 24, 2026Apple Inc. v. WeCrevention, Inc.The Director denied institution of Apple’s IPR petitions against WeCrevention’s high-speed memory chip module patents under discretionary § 314(a), applying Revvo and Infineon rather than reaching the prior-art merits. The denial rested…
  21. PTAB Director Review · June 24, 2026Apple Inc. v. WeCrevention, Inc.The Director denied institution of IPR2026-00243 challenging WeCrevention’s U.S. Patent No. 12,154,652 in the computer-memory module technology area under discretionary authority, effectively § 314(a), based on Apple’s inconsistent…
  22. PTAB Director Review · June 24, 2026Apple Inc. v. WeCrevention, Inc.The Director denied institution under § 314(a) discretion in Apple’s IPRs against WeCrevention’s high-speed memory module patents, including IPR2026-00240 challenging U.S. Patent No. 9,201,834. The core reason was claim-construction…
  23. Fed. Cir. · June 23, 2026Enanta Pharmaceuticals, Inc. v. Pfizer Inc.The Federal Circuit affirmed, holding that the provisional application's disclosure of a —NHC(O)—C2-C12-alkyl substituent did not provide written description support for the later-claimed —NHC(O)—C1-alkyl subject matter. Because the…
  24. Fed. Cir. · June 11, 2026Dynapass IP Holdings LLC v. Bank of America CorporationThe Federal Circuit affirmed the district court's construction of "receiving the password" to exclude separately receiving the passcode and token components. Under the claim language and written description, the claimed "password" is…
  25. Fed. Cir. · June 5, 2026Melinta Therapeutics, LLC v. Nexus Pharmaceuticals, Inc.The Federal Circuit affirmed the judgment as to the '802 patent, upholding the district court's constructions of "composition" and "administering" and rejecting Nexus's written-description challenge. Because the '802 and '105 patents…
  26. PTAB Director Review · May 26, 2026Sun Pharmaceutical Industries, Inc. v. Biofrontera Inc.The Director denied institution of the PGR challenging Biofrontera’s Patent 12,280,146 B2 in the pharmaceutical/biotech space because Sun failed to establish that it identified all real parties in interest. Applying Corning Optical,…
  27. ITC · May 22, 2026Certain Nanolaminate Alloy Coated Metal Parts and Products Containing the Same; Inv. No. 337-TA-1431 (Violation)The ALJ found no violation of Section 337, concluding that Modumetal failed to prove by a preponderance of evidence that Respondents' ToughShield® Plus coated products infringe Asserted Claims 1, 2, 3, 5, and 7 of the '419 patent or…
  28. PTAB Director Review · May 15, 2026Westinghouse Air Brake Technologies Corporation et al. v. Railware, Inc. et al.The Director denied institution in IPR2026-00133, IPR2026-00134, and IPR2026-00135 (covering Patents 9,517,782, RE47,835, and RE49,115, directed to railroad technology) on discretionary grounds under 37 C.F.R. § 42.104(b)(3) because…
  29. PTAB Director Review · May 15, 2026Westinghouse Air Brake Technologies Corporation et al. v. Railware, Inc. et al.The Director denied institution in IPR2026-00133, -00134, and -00135 (covering Patents 9,517,782 B2, RE47,835 E, and RE49,115 E, directed to railroad technology) because Petitioner Westinghouse Air Brake Technologies failed to present its…
  30. PTAB Director Review · May 15, 2026Westinghouse Air Brake Technologies Corporation et al. v. Railware, Inc. et al.The Director denied institution in IPR2026-00133, -00134, and -00135 (covering Patents 9,517,782, RE47,835, and RE49,115, directed to railroad technology) on discretionary grounds because Petitioner Westinghouse Air Brake Technologies…
  31. PTAB Director Review · May 13, 2026Ford Motor Company v. AutoConnect Holdings LLCThe Director denied institution of IPR2026-00171 (and companion cases -00172 and -00173) under 35 U.S.C. § 314(a) because Ford Motor Company maintained inconsistent claim construction positions between its IPR petitions and the parallel…
  32. PTAB Director Review · May 13, 2026Ford Motor Company v. AutoConnect Holdings LLCThe Director denied institution of IPR2026-00172 (and companion cases IPR2026-00171 and IPR2026-00173) under 35 U.S.C. § 314(a) because Ford Motor Company maintained inconsistent claim construction positions between its IPR petitions and…
  33. PTAB Director Review · May 13, 2026Ford Motor Company v. AutoConnect Holdings LLCThe Director denied institution of IPR2026-00173 (and companion cases IPR2026-00171 and IPR2026-00172) under 35 U.S.C. § 314(a) because Ford Motor Company maintained claim construction positions in parallel district court litigation that…
  34. PTAB · May 12, 2026Ford Motor Company v. AutoConnect Holdings LLCWhen a petitioner obtains institution on plain-and-ordinary-meaning unpatentability theories but then, in parallel district court litigation, advances broader indefiniteness positions affecting the challenged claims without having…
  35. PTAB Director Review · May 12, 2026Ford Motor Company v. AutoConnect Holdings LLCThe Director granted Director Review, vacated the notices granting institution, and denied institution in three related IPRs (IPR2025-01342, IPR2025-01383, IPR2025-01524) involving automotive connectivity patents owned by AutoConnect…
  36. PTAB Director Review · May 12, 2026Terumo BCT, Inc. v. Haemonetics CorporationThe Director granted Patent Owner Haemonetics's request for Director Review, vacated the Board's institution notices, and denied institution of IPR2025-01374 (U.S. Patent 11,738,124) and IPR2025-01391 (U.S. Patent 10,758,652), both…
  37. PTAB · May 12, 2026Terumo BCT, Inc. v. Haemonetics CorpWhen a petitioner states in an IPR petition that challenged claims need no construction or should receive their plain and ordinary meaning, but advances a materially different district-court claim-construction/indefiniteness…
  38. PTAB Director Review · May 12, 2026Ford Motor Company v. AutoConnect Holdings LLCThe Director granted Patent Owner AutoConnect Holdings LLC's request for Director Review, vacated the previously granted institution notices, and denied institution in all three IPRs (IPR2025-01342, IPR2025-01383, IPR2025-01524)…
  39. PTAB Director Review · May 12, 2026Terumo BCT, Inc. v. Haemonetics CorporationThe Director granted Patent Owner Haemonetics's request for Director Review, vacated the Board's institution notices, and denied institution of IPR2025-01374 (U.S. Patent 11,738,124) and IPR2025-01391 (U.S. Patent 10,758,652), both…
  40. PTAB Director Review · May 12, 2026Ford Motor Company v. AutoConnect Holdings LLCThe Director reversed the Board's institution decisions in IPR2025-01342, IPR2025-01383, and IPR2025-01524 (Ford Motor Co. v. AutoConnect Holdings LLC, covering automotive connectivity patents), vacating the notices granting institution…
  41. Fed. Cir. · May 4, 2026Enviro Tech Chemical Services, Inc. v. Safe Foods Corp.The term 'about' as used in the pH range limitation ('about 7.6 to about 10') of the '321 patent is indefinite under § 112(b) because the claims, specification, and prosecution history collectively fail to inform a skilled artisan of the…
  42. Fed. Cir. · Apr. 23, 2026Network-1 Technologies, Inc. v. Google LLCThe Federal Circuit affirmed indefiniteness of the '988 and '464 patent claims on the term 'non-exhaustive search' and affirmed summary judgment of noninfringement of the '237 patent as to the LSH version of Content ID, but reversed…
  43. PTAB · Dec. 13, 2024Cambridge Mobile Telematics, Inc. v. Sfara, Inc.Informative decision only: persuasive authority, not binding precedent. When a petitioner has argued in parallel district court litigation that claim terms are means-plus-function terms under § 112(f) (and called that issue dispositive),…
  44. PTAB · Mar. 10, 2023Penumbra, Inc. v. RapidPulse, Inc.When a reference patent document is applied as prior art under AIA 35 U.S.C. § 102(a)(2), the Board need not evaluate whether any claim of the reference is actually entitled to priority or benefit under 35 U.S.C. §§ 119 or 120, so the…
  45. PTAB guidance · Jan. 6, 2021Indefiniteness in AIA post-grant proceedings memorandumThe memorandum directs the Board to analyze indefiniteness under 35 U.S.C. § 112(b) in AIA post-grant proceedings using the Supreme Court's Nautilus approach, the approach used by district courts, rather than the Packard approach. It…
  46. PTAB · Feb. 25, 2019Lectrosonics, Inc. v. Zaxcom, Inc.When a patent owner files a motion to amend in an inter partes review, a request to substitute claims is ordinarily treated as contingent, the burden of persuasion on unpatentability of substitute claims ordinarily lies with the…
  47. PTAB · Jan. 18, 2019Amazon.com, Inc. v. Uniloc Luxembourg S.A.When a patent owner files a motion to amend under 35 U.S.C. § 316(d) in an inter partes review, the Board may consider, and a petitioner may raise in opposition, grounds of unpatentability other than § 102 and § 103, such as § 101,…
  48. PTAB · Mar. 2, 2018Ex parte DitzikInformative decision only: persuasive authority, not binding precedent. When a prior district court judgment of invalidity for lack of written description is final and the applicant had a full and fair opportunity to litigate, the Board…
  49. PTAB · Aug. 25, 2017Ex parte McAwardWhen examining a pending application, the Office makes a prima facie case of indefiniteness under § 112(b) (pre-AIA § 112, second paragraph) by applying the broadest reasonable interpretation and explaining how the metes and bounds of the…
  50. PTAB · July 27, 2017Hospira, Inc. v. Genentech, IncInformative decision only: persuasive authority, not binding precedent. When the examiner during prosecution expressly decided that the challenged claims were entitled to an earlier priority date and withdrew a rejection over a reference…
  51. PTAB · Apr. 28, 2016Ex parte SchulhauserWhen a method claim recites steps that need to be performed only if a condition precedent is met, the broadest reasonable interpretation covers a method in which the condition is not met, so the Board need not require prior art evidence…
  52. PTAB · Oct. 1, 2009Ex parte RodriguezWhen a claim to a computer-implemented function is written in means-plus-function form, or uses a nonce term such as "generator," "builder" or "environment" that is not recognized as the name of structure, and the specification discloses…
  53. PTAB · Feb. 3, 2009Ex parte CatlinWhen a claim limitation uses "means" and recites no structure to perform the function in its entirety, so that 35 U.S.C. § 112, sixth paragraph is invoked, and the function is computer-implemented, the Board must look to the specification…
  54. PTAB · Nov. 19, 2008Ex parte MiyazakiWhen a claim pending before the USPTO is amenable to two or more plausible claim constructions, the Board may hold it indefinite under 35 U.S.C. § 112, second paragraph, and need not find it "insolubly ambiguous" or "not amenable to…
  55. PTAB · May 29, 2008Ex parte KimInformative decision only: persuasive authority, not binding precedent. When a claim recites a relative limitation (here, that a finger-to-via "width ratio ... is reduced") and neither the claim nor the specification gives the artisan…
  56. PTAB · Apr. 29, 2008Ex parte POD-NERS, L.L.C .Informative decision only: persuasive authority, not binding precedent. When a claim to a plant variety or its seed relies on a seed deposit and the record (the patent's own statements, declarations and counsel's admissions) shows the…
  57. PTAB · Mar. 31, 2008Ex parte BobrowskiInformative decision only: persuasive authority, not binding precedent. When claim scope is so unclear, even in light of the specification, that applying prior art would require "speculation as to the meaning of the terms employed and…
  58. PTAB · Mar. 11, 2008Ex parte PorroInformative decision only: persuasive authority, not binding precedent. When a claim recites a genus of proteins defined by both a percentage sequence identity to a reference sequence (here at least 90% identity to SEQ ID NO: 11) and a…
  59. PTAB · Nov. 13, 2007Ex parte LazzaraInformative decision only: persuasive authority, not binding precedent. When a pending claim uses a term of degree such as "substantially uniform" and neither the claims, the specification, nor record evidence supplies a standard for…
  60. PTAB · Nov. 13, 2007Ex parte HicksInformative decision only: persuasive authority, not binding precedent. When an examiner rejects claims under § 112, first paragraph, for lack of enablement of full scope, the examiner bears the burden of a prima facie case weighing the…
  61. PTAB · May 31, 2007Ex parte KubinWhen the prior art supplies a known problem (isolating a particular cDNA), a limited number of conventional methodologies for solving it, and a reasonable expectation that at least one will succeed, the Board may treat the claimed product…
  62. PTAB · Mar. 14, 2007Ex parte AdamsInformative decision only: persuasive authority, not binding precedent. When a reissue is filed more than two years after grant and the original patent claim is indefinite because it contains contradictory limitations (an element both…
  63. PTAB · Jan. 31, 2006Ex parte GleaveInformative decision only: persuasive authority, not binding precedent. In a written description rejection under the first paragraph of 35 U.S.C. § 112, it is the examiner's "initial burden [to] present[] evidence or reasons why persons…
  64. PTAB · Oct. 20, 2005Ex parte AshkenaziInformative decision only: persuasive authority, not binding precedent. When a patent qualifies as prior art under 35 U.S.C. § 102(e) and the applicant offers no evidence that the reference's own claims lack § 112 support, the reference…
  65. PTAB · May 21, 2004Ex parte ShawInformative decision only: persuasive authority, not binding precedent. When an ex parte applicant lost an issue (here, enablement of claimed apparatus) in a final inter partes interference decision and the four issue-preclusion elements…
  66. PTAB · May 15, 2003Noelle v. ArmitageInformative decision only: persuasive authority, not binding precedent. When, at the close of decisions on preliminary motions, one party has no patentable claims corresponding to the count and priority has been developed no further than…
  67. PTAB · May 12, 2003Genise v. DesautelsInformative decision only: persuasive authority, not binding precedent. When a moving party in an interference relies on a prior art reference or on a general incorporation by reference, the Board will not search the record or credit…
  68. PTAB · Mar. 19, 2003Sanada v. ReynoldsInformative decision only: persuasive authority, not binding precedent. When a claim element uses purely functional language to define a structural component without the word "means," and the term is neither a recognized name for…
  69. PTAB · Jan. 4, 2002Gregory v. TsuiInformative decision only: persuasive authority, not binding precedent. When a party attacks an opponent's accorded benefit in an interference, a best-mode defect in the benefit application does not defeat its status as a constructive…
  70. PTAB · Jan. 1, 2002Preputnick v. ProvencherInformative decision only: persuasive authority, not binding precedent. When a party relies on an expert declaration for a written description challenge, and the expert states a conclusion without disclosing the underlying facts or data…
  71. PTAB · Oct. 16, 2001Tseng v. Doroodian-ShojaInformative decision only: persuasive authority, not binding precedent. When a party moves for no interference-in-fact, it bears the burden of showing patentable distinctness in either direction: either that none of its claims…
  72. PTAB · Oct. 18, 2000Glaxco Wellcome, Inc. v. CabillyWhen a party seeks additional discovery to support a preliminary motion for judgment of unpatentability, and the discovery targets an examiner's ex parte allowance rationale (a declaration relied on in prosecution and examiner interviews)…
  73. PTAB · Feb. 24, 1999Griggs v. RoseWhen the examiner has already determined, before declaration, that an involved application claim is unpatentable (here under 35 U.S.C. § 112, first paragraph, for lack of written description) and that determination has not been overcome…
  74. PTAB · Jan. 31, 1996Ex parte BhideWhen a specification states a utility (or "how to use") that corresponds in scope to the claimed subject matter, it must be taken as sufficient under 35 U.S.C. § 101 and the first paragraph of § 112 unless one skilled in the art has…

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