McDonnell Boehnen Hulbert & Berghoff LLP partner James Gumina authored an article entitled, “Expert Can Make Or Break Inherent Anticipation Case” that appears in the April 16, 2015 online edition of Law360.com. Anticipation is a basic concept in patent law. On its face the concept is simple — if a single prior art reference teaches every element of a claim in the proper context, then the claim is not patentable, i.e., it is anticipated by the prior art reference. Anticipation is easy enough to establish if the prior art expressly sets forth each of the elements of the claims. However, more interesting issues of proof arise when one or more elements of the claims are not expressly stated in the prior art, but following the prior art necessarily yields the missing elements of the claim.
Note: this article originally appeared in the MBHB Winter 2015 edition of snippets publication.