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Exemplary Embodiments Provide Insufficient Written Description for Broad Genus Patent Claims
The Federal Circuit explained that “[f]or genus claims using functional language, like the binding function of the [single chain antibodies]
York Faulkner
Sep 10, 20214 min read


EDVA Rocket Docket - A Wild Ride Through Genteel Virginia
“Any request for an extension of time . . . will be looked upon with disfavor.” U.S. District Court for the Eastern District of Virginia Local Rule 7(I) Have you or has your company just been sued or threatened with a lawsuit in the Eastern District of Virginia Rocket Docket? Regardless of what you have heard, it is true that the United States District Court for the Eastern District of Virginia is a unique and special forum. Attorneys who regularly appear in courts throughou
York Faulkner
Aug 1, 202122 min read


No Written Description Where Patent Fails to Attribute Claimed Functions to Disclosed Structures
“A patent owner cannot show written description support by picking and choosing claim elements from different embodiments that are never...
York Faulkner
Jul 18, 20214 min read


IPR Petition’s Failure to Summarize Referenced Evidence Forfeited Obviousness Challenge
“‘Petitioner’s argument on rehearing amounts to a contention that we overlooked Petitioner’s invitation to formulate arguments on their...
York Faulkner
Jul 4, 20216 min read


Error to Require Proof of Prior Art Enablement in Inter Partes Review Petition
The court ruled that “regardless of the forum, prior art patents and publications enjoy a presumption of enablement, and the patentee . ....
York Faulkner
Jun 28, 20214 min read


IPR Petition’s Failure to Challenge Patent Claims with Particularity Forfeited Meritorious Arguments
This case provides a sobering and cautionary example of the strictness with which the Board and Federal Circuit interpret the procedural...
York Faulkner
Jun 22, 20215 min read


Applicability of Patent Safe Harbor to Conduct Supporting Foreign Regulatory Approvals
. . . Some aspects of the safe harbor, however, are not so well charted, especially where the U.S.-based drug and device development...
York Faulkner
Jun 14, 202114 min read


Patent Specification’s Narrow Description Disavows Claims to Alternative Variations of the Invention
In Wastow Enterprises, LLC v. Truckmovers.com, Inc. et al., No. 2020-2349 (Fed. Cir. May 14, 2021), the U.S. Court of Appeals for the...
York Faulkner
May 26, 20213 min read


Welcome to Japan
日本へようこそ! Japan’s economic influence is pervasive. It is nearly impossible to engage in any form of business without encountering the...
York Faulkner
May 19, 20212 min read


Nucleic Acid Sequencing Patents Failed to Enable the Full Scope of the Claimed Inventions
In Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc., No. 20-2155 (Fed. Cir. May 11, 2021), the Federal...
York Faulkner
May 17, 20212 min read


Law Firm Opportunities in the Japanese Market
. . . the largest market potential for complex Japanese legal services is not in Asia but instead in North America and Europe. M&A,...
York Faulkner
Apr 7, 202111 min read


A Primer on Law Firm Profit Maximization ~ Thriving Amidst a Global Pandemic
. . . even for the same timekeeper, billable hours are not all created equally and do not contribute equally to profits. . . . Stated...
York Faulkner
Apr 5, 202122 min read


Corporate Spinoffs - Unlocking Wealth in Japan’s Economy
... Although some of the spinoffs may have targeted underperforming business units, the vast majority of the spinoffs focused on “rising...
York Faulkner
Apr 3, 20218 min read


The Escalating Role of Information Technology & Artificial Intelligence in the Practice of Law
... Artificial intelligence (“AI”) is rapidly changing the way lawyers work. Just as AI is overtaking the control of vehicles and the...
York Faulkner
Mar 17, 202110 min read


A Brief Overview of Patent Litigation in Japan
Japanese patent law is largely similar to the substantive law in the United States. Procedurally, however, patent litigation in Japanese...
York Faulkner
Mar 14, 20215 min read


A Brief Overview of Japanese Patent Law
Patent Term & Statute of Limitations. Article 67 of the Patent Act establishes a twenty (20) year patent term, beginning from the date...
York Faulkner
Mar 13, 20219 min read


Procedural Aspects of Patent Infringement Litigation in Japan
Pre-Suit Investigation & Diligence. A patentee or exclusive licensee who wishes to enforce a patent in Japanese courts invests heavily in...
York Faulkner
Mar 12, 202112 min read


Defenses to Patent Infringement in Japanese Litigation
An accused infringer in Japanese courts, depending on the circumstances, may assert a variety of defenses to allegations of patent...
York Faulkner
Mar 11, 202112 min read


Remedies in Japanese Patent Litigation
A patentee, depending on the circumstances, may seek a variety of remedies in Japanese courts against an accused infringer. This page...
York Faulkner
Mar 9, 20218 min read


Patent Invalidation Trials at the Japanese Patent Office
Historically, Japan has had a bifurcated system for adjudicating patent rights—issues of patent infringement were resolved in the...
York Faulkner
Mar 8, 202113 min read
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