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AK Steel Corp. v. Sollac

344 F.3d 1234 (Fed. Cir. 2003)
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AK Steel Corp. v. Sollac

210 Citing cases

  1. Johnson Johnson Vision Care v. Ciba Vision Corp.

    648 F. Supp. 2d 1294 (M.D. Fla. 2009)   Cited 7 times
    Holding that errors in a formula in the specification do not render claim term indefinite if one of ordinary skill in the relevant art recognize the errors and could correct them

    (Doc. 286 at 48.) In support, J J cites Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1381 (Fed. Cir. 2007), Auto. Techs. Int'l, Inc. v. BMW of N. America, Inc., 501 F.3d 1274, 1284 (Fed. Cir. 2007), and AK Steel Corp. v. Sollac Ugine, 344 F.3d 1234, 1243-45 (Fed. Cir. 2003). J J cites to this case precedent for the proposition that when "the asserted claims are broad enough to cover [two embodiments], the patents must enable both embodiments."

  2. Kim v. Earthgrains Company

    No. 01 C 3895 (N.D. Ill. Jan. 10, 2005)   Cited 10 times
    Holding prior claim construction has no preclusive effect, and collecting cases demonstrating unsettled state of law

    A "consisting essentially of" claim occupies a middle ground between closed claims that are written in a "consisting of" format and fully open claims that are drafted in a "comprising" format. AK Steel Corp. v. Sollac and Ugine, 344 F.3d 1234, 1239 (Fed. Cir. 2003) ( citing PPG Industries, 156 F.3d at 1354). The phrase is commonly used to signal that the invention necessarily includes the listed ingredients, but is open to unlisted ingredients that do not materially affect the basic and novel properties of the invention.

  3. HZNP Medicines LLC v. Actavis Labs. UT, Inc.

    940 F.3d 680 (Fed. Cir. 2019)   Cited 42 times   8 Legal Analyses
    Affirming that a label did not induce infringement when it did not instruct carrying out all of the claimed method's steps

    The phrase serves as a middle ground between closed-ended claims using the phrase "consisting of" and open-ended claims using the phrase "comprising." Id. ; AK Steel Corp. v. Sollac & Ugine , 344 F.3d 1234, 1239 (Fed. Cir. 2003). Accordingly, a drafter will generally include the phrase "consisting essentially of" before (a) a list of ingredients when dealing with a composition claim, or (b) a series of steps when dealing with a process claim.

  4. Trs. of Bos. Univ. v. Everlight Elecs. Co.

    896 F.3d 1357 (Fed. Cir. 2018)   Cited 24 times   1 Legal Analyses
    Finding enablement of "five out of the six referenced permutations" in the patent insufficient

    Facts supporting an invalidity conclusion must be shown by clear and convincing evidence. AK Steel Corp. v. Sollac & Ugine , 344 F.3d 1234, 1238–39 (Fed. Cir. 2003)."[T]o be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.

  5. Sitrick v. Dreamworks

    516 F.3d 993 (Fed. Cir. 2008)   Cited 126 times   3 Legal Analyses
    Affirming summary judgment that claims were invalid for lack of enablement when the claims encompassed both video games and movies, but the specification did not enable the invention for use in movies

    Fed.R.Civ.P. 56(c). Whether a claim satisfies the enablement requirement of 35 U.S.C. § 112, ¶ 1 is a question of law, reviewed de novo, based on underlying facts, which are reviewed for clear error. AK Steel Corp. v. Sollac, 344 F.3d 1234, 1238-39 (Fed. Cir. 2003). The evidentiary burden to show facts supporting a conclusion of invalidity is one of clear and convincing evidence because a patent is presumed valid.

  6. Liebel-Flarsheim v. Medrad

    481 F.3d 1371 (Fed. Cir. 2007)   Cited 159 times   4 Legal Analyses
    Holding invalid claims that had been given a broad construction at the patentee's behest in an earlier appeal

    Because a patent is presumed to be valid, the evidentiary burden to show facts supporting a conclusion of invalidity is one of clear and convincing evidence. AK Steel Corp. v. Sollac Ugine, 344 F.3d 1234, 1238-39 (Fed. Cir.2003). A. The Front-Loading 669 and 261 Patents

  7. Prostrakan, Inc. v. Actavis Labs. Ut, Inc.

    Case No: 2-16-CV-0044-RWS-RSP (E.D. Tex. Jul. 15, 2017)

    When, however, the "basic and novel properties" themselves are in dispute, courts have construed the term in order to define the "basic and novel properties" to delineate what must be shown for the purposes of infringement or invalidity. Id. *15-16 (citing AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1239-40 (Fed. Cir. 2003) (determining the basic and novel property of the invention by referring to the specification); L'Oréal S.A. v. Johnson & Johnson Consumer Cos., Inc., 2014 U.S. Dist. LEXIS 190268, *4 (D. Del. Nov. 5, 2014) ("As with claim construction, the court determines the basic and novel properties of an invention as a matter of law, while resorting to the same sources of evidence used for claim construction."). Accordingly, the Court will construe "consisting essentially of" in accordance with its well-established legal meaning, which is: "including the listed ingredients and open to unlisted ingredients that do not materially affect the basic and novel properties of the invention."

  8. Rothschild v. Cree, Inc.

    711 F. Supp. 2d 173 (D. Mass. 2010)   Cited 13 times
    Interpreting assignment contract that stated that employee “hereby assign and agree to assign ... [to employer] ... all inventions and technical or business innovations developed or conceived by me, alone or with others, while I am employed ...” to mean that the employee automatically assigns any patent to the employer as soon as it comes into being, so long as it was conceived while the employee was working for the employer

    The party asserting lack of enablement of a patent bears the burden of proving the point by clear and convincing evidence.AK Steel Corp. v. Sollac, 344 F.3d 1234, 1238-39 (Fed. Cir. 2003). The "enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation."Id. at 1244.

  9. General Elec. Co. v. Sonosite, Inc.

    641 F. Supp. 2d 793 (W.D. Wis. 2009)   Cited 2 times
    Explaining that although a patentee need not describe “how to make and use every possible variant of the claimed invention,” where claims are “open-ended,” the patent would need to be supported by “reasonable enablement of the scope of the range”

    The enablement requirement "is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation.'" Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 2008) (citing AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003). However, the written description requirement is broader than requiring merely an explanation of "how to 'make and use'; the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.

  10. Automotive Technologies International v. BMW of North America, Inc.

    378 F. Supp. 2d 780 (E.D. Mich. 2005)   Cited 5 times

    Claims that are not enabled by the patent's specification are invalid. See, e.g., AK Steel Corp. v. Sollac Ugine, 344 F.3d 1234, 1245 (Fed. Cir. 2003). "[A]s part of the quid pro quo of the patent bargain, the applicant's specification must enable one of ordinary skill in the art to practice the full scope of the claimed invention."