Tethering the Nexus: Framing the Claims for Unclaimed Features and Novelty

• Author: Scott F. Peachman
• Pages: 41-45

Published in Landslide® magazine, Volume 12, Number 3, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

Tethering

the Nexus

Framing the Claims

for Unclaimed

Features and Novelty

By Scott F. Peachman

Patent litigators are often told to refrain from characterizing

claim language, which denes the boundaries of the inven-

tion and should remain free from distortion. But there may

come a time when claim language does not quite align with

the praise for which an invention receives. For instance,

claims drawn to a novel pharmaceutical formulation may

only later demonstrate unexpected results in clinical trials.

Alternatively, an invention may be repurposed for applications that

work surprisingly well. In such situations, patent owners should con-

sider how to frame their claim language to best support evidence of

objective indicia of nonobviousness in view of controlling law.

Claim language correlates with evidence of objective indicia of

nonobviousness through the doctrine of nexus. Generally, this doc-

trine requires the patentee to establish (1) that such evidence is

commensurate in scope with the claims, and (2) that if the evidence

is tied to a specic product, the product embodies the scope of the

claims.1 Objective indicia lack a nexus, for example, if they exclu-

sively relate to claim elements that were already known in the art.2

Nor can a nexus exist if objective indicia are due only to unclaimed

features of an invention.3 When a proper showing is made, however, a

nexus is presumed and the patent challenger must rebut it.4 This pre-

sumption is not new to patent law,5 but nonetheless its misapplication

has been criticized over the years.6

The U.S. Court of Appeals for the Federal Circuit rearticulated its

understanding of nexus law in WBIP, LLC v. Kohler Co. in 2016.7 In doing

so, it opened up new avenues for establishing a nexus between evidence

Scott F. Peachman is a senior associate in Paul Hastings’s Life Sciences IP Litigation

practice. His practice focuses on high-stakes patent litigation matters in the chemical

and pharmaceutical arts. He can be reached at scottpeachman@paulhastings.com.

Tethering

the Nexus

Image: GettyImages