Friday, January 29, 2016

Section 112 Does Not Contain Conciseness Requirement Independent of Enablement

The court denied defendant's motion for summary judgment that plaintiff's internet gateway patents were invalid for lack of conciseness. "It is basic hornbook law that Section 112 contains three requirements for an inventor seeking a patent: (1) written description; (2) enablement; and (3) best mode. The word 'concise' is included in the statutory section as part of the second requirement of enablement. . . . [Defendant] would have a fourth requirement be made out of the inclusion of the word 'concise' in the statute. However, [defendant] acknowledges that there are no controlling cases — or any cases — finding this 'concise' language in the statute to be a formal requirement, much less a requirement that can lead to the invalidation of a patent. Therefore, this Court declines the opportunity to create an additional requirement in Section 112."

Nomadix, Inc. v. Hospitality Core Services LLC d/b/a Blueprint RF, 2-14-cv-08256 (CACD January 27, 2016, Order) (Pregerson, J.)

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