PTAB Invalidates Claims for Section 112 Failures

Jan 3, 2017

Reading Time : 1 min

The PTAB found that the claims failed the enablement requirement under § 112. First, Petitioner’s evidence showed that the claimed method was inoperative within the claimed temperature range. Specifically, Petitioner described two tests in which none of the tested devices exhibited the claimed deformation. Second, the PTAB found that undue experimentation would be required to practice the full scope of the claimed invention. The specification provided only one narrow example and failed to discuss how to achieve the desired deformation under the broadly claimed temperature range. Third, the PTAB relied on the testimony of the sole named inventor, who did not believe it was possible to achieve the claimed deformation results as of the effective filing date.

In addition, the PTAB concluded that the ’991 patent lacked a sufficient written description. The PTAB explained that the disclosure of one species was insufficient to support the genus of the claimed temperature range. The PTAB relied on the two tests showing that the disclosed embodiments were inoperative and on the inventor’s testimony to show that he was not in possession of the invention.

Moreover, the PTAB clarified that a determination of failure to satisfy the enablement and written description requirements under § 112 was not inconsistent with a finding of anticipation. When a claim covers several compositions, the claim is anticipated if one of them is in the prior art. Accordingly, the PTAB found the claims invalid as being anticipated by the prior art.

US Endodontics, LLC v. Gold Standard Instruments, LLC, Case PGR2015-00019 (PTAB Dec. 28, 2016). [Goodson (opinion), Cocks and Jung]

Share This Insight

Previous Entries

IP Newsflash

July 1, 2025

In an appeal from an inter partes review, the Federal Circuit recently clarified that the enablement inquiry applied to prior art references in the context of an anticipation defense differs from the enablement inquiry applied when evaluating the claims of a patent.

...

Read More

IP Newsflash

June 26, 2025

The Northern District of Ohio denied a motion to compel the plaintiff to produce test results referenced in its initial disclosures and complaint. The court found that because the “test results are not facts but rather are opinions,” the information was protected as work product. Furthermore, because that testing would not be used as evidence in the litigation, the defendant was not prejudiced.

...

Read More

IP Newsflash

June 6, 2025

In a precedential opinion, the Federal Circuit definitively held that the Patent Trial and Appeal Board has jurisdiction over IPRs that concern expired patents.

...

Read More

IP Newsflash

June 6, 2025

In a patent infringement litigation in the U.S. District Court for the Eastern District of Texas, Judge Rodney Gilstrap denied a joint motion to stay the litigation pending resolution of inter partes review when it was uncertain that all defendants would be bound by the statutory estoppel provision of 35 U.S.C. § 315(e).

...

Read More

IP Newsflash

May 30, 2025

A district court recently dismissed a patent infringement complaint for improper venue under 28 U.S.C. § 1400(b), finding that the storage and distribution of products from an Amazon warehouse was not sufficient to establish that warehouse as a regular and established place of business in the district.

...

Read More

IP Newsflash

May 27, 2025

The Federal Circuit affirmed a District of Delaware finding of non-infringement in an ANDA litigation due to the patentee’s clear and unmistakable disavowal of claim scope during prosecution. Specifically, the court held that statements made during prosecution of a parent application before the asserted claims were allowed amounted to a prosecution disclaimer that extended to subsequent patents in the family. In reaching this conclusion, the court rejected an attempt by the patentee to resurrect the claim scope through a unilateral, self-serving statement made in later applications in the family.

...

Read More

IP Newsflash

May 13, 2025

The Federal Circuit recently affirmed a district court’s holding that patent term extension (PTE) for a reissued patent was properly based on the issue date of the original patent and not that of the reissued patent. The Federal Circuit concluded that, where both the original and reissued patents claimed a drug product under regulatory review, using the issue date of the original patent to calculate PTE comports with both the purpose of the Hatch-Waxman Act and the related statutory context.

...

Read More

IP Newsflash

May 12, 2025

The Patent Trial and Appeal Board recently declined to institute a petition for IPR that was filed on the same day that the petitioner filed another petition challenging the same claims of the same patent. The board was not persuaded by petitioner’s arguments that a second petition was needed due to alleged claim construction issues or the number, length or scope differences of the challenged claims.

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.