Broadened Continuation Receives Broad Construction; Enablement Questioned

Saunders Group v. Comfortrac (Fed. Cir. 2007).

Typical use of continuation practice: (1) Patentee files application claiming feature B1 (as the only described embodiment of generic class B). (2) Competitor releases product that would be infringing except for its feature B2. (3) Patentee files continuation that replaces B1 with the generic element B. (4) patent issues. What happens in upcoming litigation?

This scenario, which is exemplified in Saunders Group, raises at least three particular litigation issues listed in order applicability: (1) whether the broad scope of element B has been properly enabled; (2) whether the specific element B1 is an essential element of the invention whose removal would be a violation of the written description requirement discussed in Gentry Gallery; and (3) whether the broad term B should be construed in a limited fashion to avoid problems 1 and 2 (applying the maxim that claims should be construed to preserve validity).

We know from Saunders Group, of course, that it is impermissible to import limitations into a claim even when hoping to preserve validity of the claim.  Especially where here, there was no question that “the applicant expressly and unambiguously state[ed] his intention to claim broadly.”

Here, the lower court had issued a summary judgment of non-infringement based on its narrow claim construction (construing B as B1). The CAFC reversed that holding, but suggested that invalidity under enablement is the correct avenue to pursue on remand:

[W]e hold only that the court’s validity analysis cannot be used as basis for adopting a narrow construction of the claims. Instead, any validity issues that the defendants have preserved and wish to press can be addressed on remand, as was done in the Liebel-Flarsheim case. See Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371 (Fed. Cir. 2007) (holding invalid claims that had been given a broad construction at the patentee’s behest in an earlier appeal).

Notes:

  • This type of case may soon be history if new continuation rules are truly effected.

31 thoughts on “Broadened Continuation Receives Broad Construction; Enablement Questioned

  1. SF, I agree that it would be sad if Liebel had omitted their background section and, because of that, had prevailed. I’m not sure that you really mean that though. I suspect you mean the opposite of what you wrote, that they ought to have prevailed, and what is sad is that the fatal background section was actually included.

  2. MM observed, “Right, except that Liebel admitted in the background that jacket’s were needed to practice their invention, admitted in court that they tried to make a jacketless version of their claimed invention and failed, and amended their claims to omit the pressure jacket limitation only after they saw Medrad’s product.”

    … and the sad thing is that, even with their failure to build a jacketless system and their post-filing removal of jacket from the claims, they might have been okay if they hadn’t written that damn(ing) background section.

  3. I saw three responses from MM and thought I would have a lot of responding to do. Aparently not. In response to the one response posted three times, I will say that MM and I apparently disagree on the scope of the claimed invention and leave it at that.

  4. “Of course in Liebel the CLAIM was fully enabled as the presence of a jacket was irrelevant to the claimed subject matter.”

    Right, except that Liebel admitted in the background that jacket’s were needed to practice their invention, admitted in court that they tried to make a jacketless version of their claimed invention and failed, and amended their claims to omit the pressure jacket limitation only after they saw Medrad’s product.

    But other than that, yeah, the presence of a jacket was irrelevant.

    [rolls eyes]

  5. “Of course in Liebel the CLAIM was fully enabled as the presence of a jacket was irrelevant to the claimed subject matter.”

    Right, except that Liebel admitted in the background that jacket’s were needed to practice their invention, admitted in court that they tried to make a jacketless version of their claimed invention and failed, and amended their claims to omit the pressure jacket limitation only after they saw Medrad’s product.

    But other than that, yeah, the presence of a jacket was irrelevant.

    [rolls eyes]

  6. “Of course in Liebel the CLAIM was fully enabled as the presence of a jacket was irrelevant to the claimed subject matter.”

    Right, except that Liebel admitted in the background that jacket’s were needed to practice their invention, admitted in court that they tried to make a jacketless version of their claimed invention and failed, and amended their claims to omit the pressure jacket limitation only after they saw Medrad’s product.

    But other than that, yeah, the presence of a jacket was irrelevant.

    [rolls eyes]

  7. “I wonder what will happen when the district court, not bound to construe the claim narrowly to preserve validity, invalidates the broader claims and this case bounces back up to the Feds. I’m guessing that this case does not share all of the bad facts of Liebel. If so, it will be interesting to see whether the panel will (1) distinguish Liebel and preserve validity or (2) extend Liebel and invalidate the broader claims.”

    If they do the former, there is a problem because the decision in Liebel was not logically based upon the bad actions of Liebel. If they do the latter, then it will be much harder to enforce good, valid claims.

  8. “The better hypo and trickier question (that was beat to death in the Liebel thread) is what happens when someone combines inventor’s claim with another element unforseen by inventor and not enabled by inventor’s disclosure? Does the claim still tank because its full scope is not enabled?”

    Of course in Liebel the CLAIM was fully enabled as the presence of a jacket was irrelevant to the claimed subject matter.

  9. Leibel-Flarsheim needs to be overturned ASAP for the crap decision that it is. This completely unprecedented application of 112 is just completely illogical.

    A non-chemical broad claim that reads on more than what is disclosed should certainly be invalidated if there is 102 or 103 art that would invalidate it, but absent that art, the claim should be upheld.

    People like MM may glibly scoff, but arguably under the Liebel-Sham decision, nearly every claim that has been filed in the predicatble arts is either (1) now invalid for 112 purposes or (2) expressly limited to disclosed embodiments, even where there is no prior art that would invalidate the claim.

    Do I think the courts will reach this decision in all patent infringement cases – No. However, that just means more inconsistent and messy case law.

  10. MM – Thanks!

    Regarding chemical patents, that’s why I can’t stand reading the suckers, and am very glad I rarely have to.

  11. anoninventor, here you go:

    A patent specification need not teach, and preferably omits, what is well known in the art. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986).

    link to uspto.gov

    I’m 99% sure it shows up elsewhere in the MPEP.

    This axiom is common sense of course. But it is certainly ignored often enough by practitioners who bloat their specifications drawn to, e.g., a novel antibody, with, e.g., three pages of high-school level drivel re basic principles of chromatography.

    But nothing tops the specifications that forgo a simple statement such as “the composition could 50-100% pure” with “the composition could be 50%, 55%, 60%, 65%” etc etc. LOL!!! I mean, what about 55.42%??? Can it not be 55.42%??? God forbid the accused infringer used a concentration of 55.42%! And you, the patent attorney, were too lazy to provide *precise* written description support. Sure, it would have taken an hour to type in every percentage to the hundredth decimal point between 50 and 100%. But you could have had your secretary do it …

  12. Malcom – in one of your posts, you said -

    “I suppose I would point to the case law/MPEP cite stating that what is well known in the art is preferably omitted from the specification”

    Can you point out which MPEP sections and a couple of cases substantiating this one? Thanks in advance.

  13. LL – as far as your written description / 102 analogy-

    Your original spec disclosed a species and claimed that species. Your continuation tries to claim a genus. species anticipates genus under 102, so if written description = 102, you satisfay written description

  14. I would have to disagree with “Bad moon” & “Malcome”. While the square example is admittedly a simple one (intentionally so), the concept is still illustrated by it. As opposed to your assertion that “as for written description support for the genus, I suppose I would point to the case law/MPEP cite stating that what is well known in the art is preferably omitted from the specification.”, you need to keep straight the differences between enablement & written description. 2 different issues with different criteria & considerations.

    When a claim & spec. is evaluated under 112, 1st, many people get confused between enablement & written description (new matter in this case). While not an exact analogy, enablement is ananlogous to “103″ in that what is known by a POSITA can be relied upon to show that the spec is enabling to that POSITA. Written description, however, is analogous to “102″ in that the question to be answered is what the inventor know & possessed at the time of invention and NOT what would have been obvious to that POSITA.

    So, like I said earlier, I would NOT give an enablement rejection in this type of situation, I would give a written description/new matter rejection & deny the claim of priority (to the parent) since applicant did not disclose the broader rectangle/parallelogram in the originally filed spec. I have had a similar situation & went to the Board & was affirmed (if that matters here – not a published or precedential decision).

    thanks,

    LL

  15. I wonder what will happen when the district court, not bound to construe the claim narrowly to preserve validity, invalidates the broader claims and this case bounces back up to the Feds. I’m guessing that this case does not share all of the bad facts of Liebel. If so, it will be interesting to see whether the panel will (1) distinguish Liebel and preserve validity or (2) extend Liebel and invalidate the broader claims.

  16. “The square/parallelogram example is misleading. A specification disclosing a square only should be entitled to a claim of “a 2D figure with 4 sides” because it would be routine experimentation to come up with a parallelogram from a square (that is, the parallelogram is enabled by the disclosure).”

    I agree. And as for written description support for the genus, I suppose I would point to the case law/MPEP cite stating that what is well known in the art is preferably omitted from the specification.

  17. “The better hypo and trickier question (that was beat to death in the Liebel thread) is what happens when someone combines inventor’s claim with another element unforseen by inventor and not enabled by inventor’s disclosure? Does the claim still tank because its full scope is not enabled?”

    It was beat to death. The unsatisfactory answer is: sometimes yes and sometimes no, depending on the facts, e.g., disclaimers in the spec, prior failure of inventor to reduce to practice the allegedly infringing embodiment, and the “purposefulness” of the claim (i.e., was a limitation removed to broaden the claim so it would read on the accused device).

  18. The square/parallelogram example is misleading. A specification disclosing a square only should be entitled to a claim of “a 2D figure with 4 sides” because it would be routine experimentation to come up with a parallelogram from a square (that is, the parallelogram is enabled by the disclosure).

    The better hypo and trickier question (that was beat to death in the Liebel thread) is what happens when someone combines inventor’s claim with another element unforseen by inventor and not enabled by inventor’s disclosure? Does the claim still tank because its full scope is not enabled?

  19. The square/parallelogram/rhombus example is a great example. Assuming no prior art for 112¶1 discussion purposes, assume the application discloses only a square.

    Claim 1. A 2D figure with 4 sides.
    Claim 2. A 2D figure with 4 sides of equal lengths.
    Claim 3. A 2D figure with 4 sides of equal lengths and with equal interior angles.

    All claims are allowed.
    Classic patent theory would say that a rhombus would infringe Claim 1 and that a parallelogram would infringe Claims 1 and 2. A square, of course, would infringe all 3 claims.

    “New” patent theory could argue that rhombus and parallelogram would not infringe any claim because inventor only contemplated and enabled a square in the specification. Thus only a square is what the applicant regards as his invention, 112¶1. Because the public is entitled to know “what is NOT covered by a patent”, Claims 1 and 2 are rejected under 112¶1 as covering embodiments broader than what the applicant regards as his invention.

    Before you laugh me off this discussion, consider same disclosure with only one claim: A 2D figure with with 4 sides of equal lengths and with equal interior angles.

    Claim is allowed.

    Now apply DOE to rhombus and parallelogram.

    Query: If patent law is consistent, shouldn’t both examples have the same result? After all, DOE was invented by the SCOTUS to assist the claim drafter and to prevent unfair use of a patent whose claims were written too narrowly to properly cover the “essence” of the applicant’s invention.

  20. Until the Patent Office starts enforcing 112p1, accused infringers and courts will continue to prefer to deal with overbroad claims through claim construction. Primarily because of the presumption of validity (clear and convincing evidence hurdle to find invalidity).

    It’s time for the Patent Office to give those examiners some training on written description and enablement. I know it will be somewhat burdensome for them to start reading the patent specifications! What a concept.

  21. This is an old tactic. Seen Corning Glass Works v. Sumitomo Elect. 868 F.2d 1251, 9 USPQ2d 1962 (Fed. Cir. 1989). Genus does not anticipate species. Also, the genus may lack written description.

  22. Responding to my own post. I should have read LL’s statement more carefull. He was describing a case closer to the actual presented facts. I agree that I cannot add drawings or descriptions of the broader parallelogram. However, if the broader claim language is sufficiently supported by the initial disclosure (as a square supports, rectangles, rhombuses (rhombi?), and parallelograms) then there should be no problem adding the broader claim in either the original application or a continuation.

  23. I disagree with LL’s comments. To use LL’s example, let’s say I only show and disclose a square and claim a 2D figure with 4 sides of equal length and 4 equal interior angles. No CIP should be required for me to add a claim to a 2D figure with 4 sides and 4 equal interior angles or a 2D figure with 4 sides of equal length, or simply a 4-sided 2D figure.

  24. I haven’t had a chance to read the decision, but, based on what was posted, I would tend to agre with George H, above. If the spec only discloses (and claims) B1, then coming in with claims, & assumingly spec, also, for the broader B should require the filing of a CIP rather than a straight con. as this would seem to be new matter, otherwise.

    Just like if the original disclosure (very simply) dislosed a square and the continiuation now claimed a parallogram (or even a rectangle) would be new matter as there would be no original disclosure of the broader limitation was nor would there be evidence that the inventor had possession of the additional items now covered by the broader limitation.

    Based on what I’ve read here, so far, I think that is the way I would deal with a case that did this in a continuation, unless I hear otherwise.

    thanks,

    LL

  25. Paul, I think the comment about the potential impact of new PTO continuation rules was a bit overstated. The new continuation rules (assuming they are similar to those previously floated) would make it more difficult to maintain one or more continuations for an extended period of time. It would still be possible to seek broader claims in a continuation, albeit for a shorter period of time and using a fewer number of continuations. Then again, who knows what the new rules actually say?

  26. There is an en banc CAFC decision holding that an applicant is not prohibited from broadening claims in a pending application to cover a subsequent competitor’s product that it finds out about.

    Also, I have not heard of any attempt in the pending PTO rule package to prevent filing and obtaining a broader generic claim in a cntinuation where there was adequate original specification support for it. The reported proposal is to limit the NUMBER of continuations.

  27. Until the PTO starts enforcing 112p1, accused infringers and courts alike will continue to attack broad claims preferentially through claim construction. Primarily because of the presumption of validity. I think some training on 112p1 is overdue for the examiners- of course, it will be burdensome for them to start reading the specifications! What a concept.

  28. Although it seems quite diversed in the opinions coming either from the homeland or from afar, continuation (or divisional) applies to applications where there should be no additional element(s) added to the original application. Therefore, if the original application claiming only element B1 does not provide sufficient support to the broacder term B, filing continuation would not be considered appropriate and CIP may be an option. Well, at least it’s my opinion.

  29. High quality thread (so far) Thank you posters. Interesting for a reader from Europe, how principles are universal even though terminology varies. Thus, where US files continuations, we file divisionals. Where US invokes “lack of written description” in the original filing, we find “added subject matter” relative to that of the original filing. In the wash, it all comes out much the same but, along the way, there is plenty opportunity for misunderstanding between US and European patent attorneys.

    When I used to explain to a US client that his desired amendment is seen in Europe as “adding subject matter”, he was liable to get quite distressed. Nowadays, I explain it to him as a “written description” issue. He can live with that.

  30. “whether the broad term B should be construed in a limited fashion to avoid problems 1 and 2 (applying the maxim that claims should be construed to preserve validity).”

    That maxim has been severely limited and, in my opinion, deservedly so. My understanding is that it now applies only to the limited situation where an *ambiguous* term is susceptible to two constructions, and one of the constructions is plainly not enabled. In that situation ONLY, it is proper to choose the other construction, to preserve the claim’s validity.

    The question of how to apply the doctrine of “preserving validity” was resolved in Liebel I (2004; cert denied by Supreme Court and affirmatively cited by several Supremes in their refusal to rule on the Metabolite Labs case), and it is entirely consistent with perhaps the most ragingly principaled case in recent CAFC history: (drum roll): Chef America.

    I really really really hope we do not return to the days where courts (including the CAFC) were essentially rewriting facially broad claims by reading in limitations from the specification that, in nearly ever case, were purposefully omitted.

    If you miss with the bull, you risk getting gored. That’s the natural way.

  31. Re: “(2) whether the specific element B1 is an essential element of the invention whose removal would be a violation of the written description requirement discussed in Gentry Gallery”

    This application of Gentry, supposedly giving rise to an “omitted elements” test, has always bothered me. I agree with Newman’s concurrence in Reiffin v. Microsoft Corp., No. 98-1502, 2000 U.S. LEXIS 12191, at *7 (Fed. Cir., June 5, 2000)(per curiam)["Reiffin II"] in this regard.

    Removal of the essential element B1 shouldn’t, by itself, create a written description violation. Of course, if you have (unwisely) characterized B1 as being “essential” to your invention, then you have probably given little or no lip service to any other species of the generic B in your written description. Thus, the patent would be invalid for failing to satisfy the written description requirement for B.

    But, if you state that B1 or B2 or B3 (maybe B4 and B5 too!) are essential to your invention, but for some odd reason only claim B1, then IMHO, you shouldn’t get a written description violation for merely filing a continuation replacing B1 with B unless it can be shown the that three species disclosed are not sufficiently descriptive of the generic.

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