Markush Claims in Patent Prosecution and Litigation: Leveraging Federal Court Guidance
Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Wednesday, October 27, 2021
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
-
This CLE course will guide patent counsel on Markush claims in the prosecution and litigation of patents. The panel will review the original case, Ex Parte Markush, and other critical cases, including recent PTAB appeal and IPR decisions. The panel will discuss the ongoing debate about what Markush groups mean, how to handle patent prosecution, and offer guidance on Markush practice.
Ms. Kostiew is an experienced patent attorney with a demonstrated history of working in the consumer goods industry including beauty and personal care products and compositions (bars, liquids, sanitizers, shampoos, conditioners, etc.). She is skilled in Patent Prosecution, Freedom to Operate (FTO), Patent Portfolio Analysis, Patent Law, Technology Transfer, NDA/CDAs, and other aspects of Intellectual Property.
Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. She counsels her clients on a diverse range of patent issues. She assists clients on single-patent issues as well as complex matters involving multiple patents and applications requiring ongoing advice on patent portfolio strategy and development, with an eye towards litigation. She has assisted clients in the early stages of development through due diligence and patent portfolio analysis.
Mr. Irving has 47 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.
Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new patent applications, prosecutes U.S. and foreign applications, and represents applicants at appeals and oral hearings before the PTAB. She has experience in prosecuting inter partes and ex partes reexamination applications, reissue applications, and patent term extension applications for approved pharmaceuticals, including obtaining supplemental protection certificates in Europe.
Markush practice is often used in patent prosecution and is frequently a crucial issue in patent litigation. It's a practice that allows the grouping of elements rather than having a series of dependent claims. While this practice offers financial benefits, specific issues arise, including indefiniteness, improper grouping, and double inclusion, among others.
The Federal Circuit addressed Markush claims in Multilayer Stretch Cling Film v. Berry Plastics (Fed. Cir. 2016), detailing claims construction using Markush group language. The court emphasized the closed nature of the "consisting of" terminology. This decision highlights the need to carefully construct all claim language, particularly Markush group claim language, and encourages extra caution when using any "consisting of" clause.
Further, in Shire Dev. L.L.C. v. Watson Pharma. Inc. (Fed. Cir. 2017), the Federal Circuit reversed a finding of infringement because the accused product did not meet the Markush claim element. The legal community continues to debate Markush grouping and the focus of litigation.
Listen as our authoritative panel of patent attorneys examines Markush claiming and practice, what Markush groups mean, and issues that often arise. The panel will also review the Federal Circuit opinion and its guidance and offer strategies to avoid improper Markush rejections.
- Review of crucial cases related to Markush practice
- Ex Parte Markush (Comm'r Pat. 1924)
- Recent court and PTAB treatment
- Common issues arising in Markush claims
- Indefiniteness
- Double inclusion
- Combination vs. compound claims
- Generic claims
- Improper Markush grouping
- Improper Markush claim language
- What Markush groups mean
- Combating improper Markush rejections
The panel will review these and other key issues:
- What are the lessons from Federal Circuit decisions?
- What steps can patent counsel take to avoid indefiniteness, double inclusion, and other issues that arise with Markush claims?
- What strategies should patent counsel employ to reduce the likelihood of an improper Markush rejection?
Related Courses
Patent Prosecution Malpractice: Minimizing the Risk of Claims
Thursday, November 13, 2025
1:00 p.m. ET./10:00 a.m. PT