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January 08, 2020

Comments

Not a hard decision. Patentee claimed "comprising one or more X." Patentee's amendment limiting the one or more X to members of a Markush group didn't alter the "comprising one or more X" language.

Under Festo, a patentee's decision to narrow a claim surrenders only the territory between the original claim and the amended claim. Defendants wanted the claim to be construed as **consisting** of one or more members of the group. Plainly, that surrenders a whole lot more than the intervening territory.

It's good practice to claim "one or more" members of a Markush group, and to draft the specification accordingly.

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