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

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

This program is included with the Strafford CLE Pass. Click for more information.
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Conducted on Wednesday, October 27, 2021

Recorded event now available

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This CLE course 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, including recent PTAB appeal and IPR decisions. The panel will discuss the ongoing debate about what Markush groups mean, how to 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 the grouping of elements rather than having a series of dependent claims. While this practice offers financial benefits, specific issues 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 claims construction using Markush group language. The court emphasized the closed nature of the "consisting of" terminology. This decision highlights the need to carefully construct all claim language, 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 its guidance and 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. Recent court and PTAB treatment
  2. Common issues arising in Markush claims
    1. Indefiniteness
    2. Double inclusion
    3. Combination vs. compound claims
    4. Generic claims
    5. Improper Markush grouping
    6. Improper Markush claim language
  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
Dr. 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

Kostiew, Krista
Krista Kostiew
Assistant General Counsel-Patents

Ms. Kostiew is an experienced patent attorney with a demonstrated history of working in the consumer goods industry...  |  Read More

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