USA Trends and Developments Contributed by: Ed Haug, Andrew Wasson and Wan Chieh (Jenny) Lee, Haug Partners LLP
should include a review of the claims asserted and the scope of species encompassed by the claims. In particular, consider whether the claims asserted recite structural elements in addition to functional limitations. The patentee should also conduct a thorough review of the specification to identify any guidance for identifying which spe - cies would fall within the scope of the claims and which species would not. As demonstrated in the district court cases discussed above, expert testimony can be probative in an enablement analysis. Therefore, patentees should also pre - pare ahead of time to present expert testimony and other evidence for each of the Wands fac - tors in support of enablement.
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