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[dbmax]

Consider the following claims:

1) A widget comprising a red or green dorfbar.

2) A widget comprising a dorfbar selected from a group consisting in red dorfbars and green dorfbars.

3) A widget comprising a red dorfbar.

4) A widget comprising a green dorfbar.


If claim 3 were found invalid in litigation, but not 4, would the claim to a widget comprising a green dorfbar in both claims 1 and 2 also be invalid?

Thanks,
db

[JimIvey]

If claim 3 were found invalid in litigation, but not 4, would the claim to a widget comprising a green dorfbar in both claims 1 and 2 also be invalid?

Yes.  Claims 1 and 2 are invalid if claim 3 is invalid.

Regards.

[khazzah]

Claims 1 and 2 are invalid if claim 3 is invalid.

Are you assuming a prior art invalidation? Or do your remarks apply to 112 First and Second also?

[JimIvey]

Are you assuming a prior art invalidation? Or do your remarks apply to 112 First and Second also?

I had prior art rejections in mind.  I didn't see enough in the question to make any assessment of 112 issues.

Regards.

[khazzah]

I had prior art rejections in mind.  I didn't see enough in the question to make any assessment of 112 issues.

Gotcha. Thanks for clarifying.

[dbmax]

Are you assuming a prior art invalidation? Or do your remarks apply to 112 First and Second also?

Thanks Karen and Jiim. Yes, I also meant prior art rejection, but I'm always curious about other considerations.

To state the question more generally, if one area of the scope of a claim is found invalid through litigation, then is there any way to salvage the validity of the remaining scope of the claim?

This is a question on drafting with an eye toward the future, not on litigation per se.

db

[Wiscagent]

... if one area of the scope of a claim is found invalid through litigation, then is there any way to salvage the validity of the remaining scope of the claim?

This is a question on drafting with an eye toward the future, not on litigation per se.

In some situations you could go for a reissue narrowing the claims; perhaps a cip would work too.  Then, after that new patent issues you could look into filing a new suit.

[dbmax]

In some situations you could go for a reissue narrowing the claims; perhaps a cip would work too.  Then, after that new patent issues you could look into filing a new suit.

Wiscagent,

Thanks. That makes the economy of a markush claim more of a calulable risk.

db