Blog

Every now and then, a court will produce an opinion that seasoned practitioners may find to be – well, a bit odd. This might be the reaction of some in reading the scholarly, but somewhat obliquely argued Dissenting Opinion in the Federal Circuit’s recent alleged patent malpractice case of Byrne v. Wood Herron & Evans. Others may find that these highly intellectual, but rather disembodied, judicial comments could be a bit lacking in historical perspective.

The Court of Appeals for the Federal Circuit recently ruled (ClearValue Inc. v. Pearl River Polymers Inc., Fed. Cir., No. 2011-1078, Feb. 17, 2012) that a genus anticipates a species, at least sometimes. We all learned once that disclosure of a species will anticipate a later-claimed genus. However, the converse is usually not true. In ClearValue, the Federal Circuit reversed a district court (Texas, E.D.) ruling and invalidated ClearValue’s patent claim. It held that a generic disclosure anticipates a species claim, even if the reference discloses no example within the claimed range, unless the patent owner can show that the clamed range is somehow “critical” or that the examples of the claimed range “work differently.”

Welcome! We are excited to announce the launch of our new website and the new look of Dilworth IP. Please explore the site freely. We encourage you to pay particular attention to the bio pages of the talented individuals who provide world-class IP services to our clients.