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 premium CLE webinar with Q&A

Conducted on Thursday, October 31, 2019

Recorded event now available

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Program Materials

This CLE webinar 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. 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 specific issues that 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 the construction of claims using Markush group language. The court emphasized the closed nature of the "consisting of" terminology.

This decision highlights the need to construct all claim language carefully--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 the guidance it provides and will offer strategies to avoid improper Markush rejections.



  1. Review of crucial 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 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?


Burgy, Adriana
Adriana L. Burgy

Finnegan Henderson Farabow Garrett & Dunner

Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the...  |  Read More

Irving, Thomas
Thomas L. Irving

Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Murphy, Amanda
Amanda K. Murphy, Ph.D.

Finnegan Henderson Farabow Garrett & Dunner

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new...  |  Read More

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