Register | Login
Intellectual Property Today
RFC Express - Document Management System

Litigators Corner: The Specification Is the Claim

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, or by visiting his web site at

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...

To view the complete article you must be logged in
Login Now

Not A Member Yet? Sign Up For A Free 10 Day Trial Account!

  © Copyright 2010 Intellectual Property Today
Download Adobe Reader for free