By Joseph N. Hosteny of Niro, Scavone, Haller & Niro
Regular IP Today columnist Joseph N. Hosteny is an intellectual property litigation attorney with the Chicago law firm of Niro, Scavone, Haller & Niro. A Registered Professional Engineer and former Assistant US Attorney, his articles have also appeared in Corporate Counsel Magazine, The Docket (American Corporate Counsel Association), American Medical News, Inventors’ Digest, Litigation Magazine and Assembly Engineering Magazine. Mr. Hosteny can be reached at (312) 236-0733, or by e-mail at jhosteny@hosteny.com, or by visiting his web site at http://www.hosteny.com.
The Federal Circuit doesn’t import limitations from the specification of a patent into its claims. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). But who believes that? And what are the consequences when our appellate court doesn't follow its own decisions? After all, it was two judges of that court who, in their dissent, described the Federal Circuit as a “black hole” and as engaging in “interpretive necromancy.” Phillips, 415 F.3d at1330 (JJ. Mayer and Newman, dissenting). In his 2001 article, “When a Patent Claim is Broader Than the Disclosure: The Federal Circuit’s Game Has No Rules,” published in the John Ma...
