Markush Claims in Patent Prosecution and Litigation: Leveraging Federal Court Guidance

Constructing Group Claims, Navigating Comprising and Consisting of, Avoiding Improper Rejections

Recording of a 90-minute CLE webinar with Q&A

Conducted on Thursday, April 6, 2017
Recorded event now available

This CLE webinar will provide guidance to patent counsel on Markush claims in the prosecution and litigation of patents. The panel will review the original case, Ex Parte Markush, and other key cases. The panel will discuss the ongoing debate about what Markush groups mean, how to best handle patent prosecution, and offer guidance on Markush practice.


Markush practice is often used in patent prosecution and is frequently a crucial issue in patent litigation. It’s a practice that allows grouping of elements rather than having a series of dependent claims. While this practice offers financial benefits, there are certain issues that arise, including indefiniteness, improper grouping, and double inclusion, among others.

The Federal Circuit recently addressed Markush claims in Multilayer Stretch Cling Film v. Berry Plastics (Fed. Cir. 2016). The court discussed in detail the construction of claims that use Markush group language. The court emphasized the closed nature of the “consisting of” terminology.

This decision is an important reminder that care should be used with all claim language, particularly Markush group claim language, and indicates that extra caution is warranted when using any “consisting of” clause.

Further, in Shire Dev. L.L.C. v. Watson Pharma. Inc., (Fed. Cir. Feb. 10, 2017), the Federal Circuit recently reversed a finding of infringement because the accused product did not meet the Markush claim element. Markush grouping continues to be hotly debated 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 recent Federal Circuit opinion and the guidance it provides and will offer strategies to avoid improper Markush rejections.


  1. Review of key cases related to Markush practice
    1. Ex Parte Markush (Comm’r Pat. 1924)
    2. Multilayer Stretch Cling Film v. Berry Plastics (Fed. Cir. 2016)
    3. Others
  2. Common issues arising in Markush claims
    1. Indefiniteness
    2. Double inclusion
    3. Combination vs. compound claims
    4. Generic claims
    5. Improper Markush grouping
  3. What Markush groups mean
  4. Combating improper Markush rejections


The panel will review these and other key issues:

  • What lessons can be learned from recent 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?


Thomas L. Irving, Partner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Mr. Irving has 35 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.

Laura A. Labeots, Ph.D., J.D., Partner
Husch Blackwell, Chicago

Ms. Labeots’ legal practice focuses on patent procurement (drafting and prosecution); litigation; patentability, invalidity and infringement analyses; freedom-to-operate opinions; licensing agreements; appeals; and inter partes proceedings before the USPTO. Her practice is centered on the chemical arts, which stems from a combination of her masters and doctorate degrees in organic chemistry, and a decade of work as a research scientist at the bench.

Amanda K. Murphy, Ph.D.
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

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.


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