Donald Chisum: Ariad (2010) and the Overlooked Invention Priority Principle

In a new essay for the Patently-O Patent Law Journal, Donald Chisum considers the "invention priority principle" and its role in the written description analysis. 

There may be a solution: application of an established patent law priority principle. The principle focuses on a specific embodiment of a generically claimed invention as a constructive reduction to practice, that is, as a completion of the inventive process. Adopting this solution would preserve the written description of the invention's (WDIs) independence and applicability to original claims but would remove WDI as a standard for assessing the scope of a patent claim. WDI would continue to govern whether, at the time an applicant files an application, he or she has completed the inventive process, that is, "possesses" the invention. But only enablement would govern how broadly the applicant is entitled to claim that invention. It may be possible to implement this priority principle interpretation of Ariad without contradicting its clear holdings.

Cite as Donald S. Chisum, Written Description of the Invention: Ariad (2010) and the Overlooked Invention Priority Principle, 2010 Patently-O Patent L.J. 72.

Other Patently-O Patent Law Journal publications: 

28 thoughts on “Donald Chisum: Ariad (2010) and the Overlooked Invention Priority Principle

  1. 28

    I think the answer is both “yes” and “no” to the question

    That would be an unqualified, unambiguous, er, um, maybe then. But at least ‘ol Ned was once again able to give a shout out to Halliburton.

    However, a sufficient number of examples could.
    See my comment at May 10, 2010, 08:15 AM.

  2. 27

    Professor Chisum, I have been thinking further on the question. I think the answer is both “yes” and “no” to the question, “Can a description of a single embodiment satisfy the written description requirement, leaving enablement to regulate how broadly one can claim an invention?” I would rather say that to the extent the claim exceeds the scope of enablement, it also fails the written description requirement.

    Take means plus function in combination claims. It covers the embodiments described plus equivalents. Without the judicial gloss that “equivalents” means “known equivalents” I would say that such claims would fail for the same reason that the claims failed in O’Reilly v. Morse, Westinghouse vs. Boyden Power Brake, and Halliburton: They neither described nor enabled future independent inventions of others even while making them infringements.

    Now with respect to your example of “fruit,” it is a generic term that operates similarly to a single means claim: It functionally describes the invention but is not limited by statute or by judicial interpretation to “known equivalents.” Therefore, a single disclosed example could normally not enable the utility of the invention with respect to all fruit in the “unpredictable” arts. However, a sufficient number of examples could.

    To the extent that one skilled in the art would know that the invention would work with all fruit, a single disclose example may be sufficient as in the case of means plus function where a single disclosed example covers “known equivalents” without actually describing them.

  3. 26

    Thanks to Professor Chisum, and to Dennis and the Threaders for composing this delightful work: Variations on a Theme of Genus and Species.

    Since “Genus and Species” is one of those ever-present, banal universals of patent law, of which I am so fond, reading how this mundane issue is managed under the various priority contest provisions of the US patent statute is fascinating for somebody from EPC-land. One would have thought that all of this would have been sorted out, decades ago. But then, the same could be said of certain as yet unresolved points of substantive patent law in Europe

    So, I do hope the thread will continue, and continue to enlighten its readers all over the world.

  4. 25

    Ned,

    You forgot to say invention as claimed.

    Thought I’d be helpful and point that out.

  5. 24

    Well, peanut gallery, the answer is A wins the interference. See, e.g., Frazer v. Schlegel, 498 F.3d 1293 (Fed. Cir. 2006). link to scholar.google.com

    The prior invention of a single species within the count is sufficient to award priority of a genus even if the inventor fails to appreciate why it works generically.

    In this case, the “claimed” invention was to a genus and the Australian application adequately disclosed, for Section 112, p.1 purposes, a species within the count, meaning, within the claimed genus.

    Prior cases to the same effect are cited in the opinion. These include In re Zeltz, which, in turn, relies on In re Stempel.

  6. 23

    Kudos to peanut gallery for catching the main drift. Now someone see if Ned can catch that thought. For all the trees, he sure misses the forest.

    Ned, here’s a hoop – now jump. Iz done tol’ you before, Homey don’t do answers. But thanks for playin, and I’m sure ya’ll’s ready to give the proper IMHO answer. (but when ya do – make sure you put all the appropriate words in, oh, for example, – invention as claimed instead of jus’ invention. The discipline’ll do ya good.

  7. 22

    “ping advises that A must showing invention of the “claimed” genus vis-a-via the B species to win. Merely showing, in his opinion, prior invention of the same species as B is not enough.

    A seeks a second opinion. You are his counsel.

    Is ping right?”

    I think the question is clear. To spell it out, the question is “must A show invention of the claimed genus, or is it sufficient to show prior invention of B?”

    Personally, I don’t know enough about interference law to answer this one.

    However, I do agree with ping’s main point. You don’t look to the spec to see what the invention is. You look to the claims, and then you look to the spec to see whether the claimed invention is sufficiently described and enabled.

    Of course, that still doesn’t answer the big question, which is “how much does the spec have to say about a genus to satisfy the written description requirement for the genus?”

    The same can be asked about enablement of a genus.

  8. 21

    ping, Ok. Then kindly answer the question from an academic point of view. I think the question is relevant to Don Chisum’s point about a single species plus conception is sufficient to support a genus claim. But if someone else invents the species first? Who gets the patent?

    Since you have been the strongest advocate of the position that one has to show prior invention of everything claimed, I would like you to accept this challenge.

    Ned

  9. 20

    Geesh Ned, you might try to remember some small lil’ self-evident spurious thing like actually asking me a question.

    Not only do you use me in a hypo, then you want me to read you rmind and answer a question not directed to me? (I would think that if you were asking me a question, ya might phrase it something like “Ping, are you right?“, or “Ping, is this right?“, but when you ask “Is ping right?“, ya haveta wonder who left the attic lights on when they left.

  10. 17

    clap clap clap. A is a fast and dirty…. but paid for a slow and surely…. time passes … B is then abandoned. Because the B is not able. So C is only vslid to B. A hasn’t go a f… n thing to do with B anymore. And to this day the Inventor is still being held against Their will. Because of what was done before A. and after A. then B then C. It’s a cumlative effort from the beginning. Ping demand the whole history. It doesn’t matter to me. But it should matter to you, whether you have political ties or not.

  11. 16

    enough examples to demonstrate possession.

    Possession of what Ned?

    Possession of an invention?

    How do you describe that invention Ned?

    Invention as claimed?

    Ah, there’s the rub.

    Pick up your baggage.

    ping advises…

    Don’t be too sure Homey. It would be better if your hypos weren’t tainted with your jealousy.

  12. 15

    Fact pattern, A is senior party. B proves prior invention, relative to A’s filing date, of a species of the genus count plus conception of the genus. A consults ping about how to win the interference now. A says he can show prior invention of the same species as B, but cannot show prior conception of the genus nor any other examples.

    ping advises that A must showing invention of the “claimed” genus vis-a-via the B species to win. Merely showing, in his opinion, prior invention of the same species as B is not enough.

    A seeks a second opinion. You are his counsel.

    Is ping right?

  13. 14

    Hey ping,
    You are out of the Loop. You are being spoon fed things that must not be in the History. So sorry .. why were they going to give you a MILLLLLIIIOOOOONNN DOOOOOLLLLLAAARRSS.
    Why the he… lll were you given the lead?

  14. 13

    Ping, there is a difference what has to be shown to avoid prior art and to win and interference against someone who is claiming the same invention as you.

    The earlier invention of a single species by the A applicant, though, may be sufficient to knock out B applicant’s right to a patent on the Genus. This could win the interference for A if he, for example, is the senior party, but the second-to-conceive the genus or to have enough examples to demonstrate possession.

  15. 12

    The Bill of Rights is for you
    the bill for the wrongs, let me tally
    One or the other, be sued or sue
    From the mountain to the valley
    nowhere to hide
    we lawyers by your side
    you can look and look
    you will find us
    fighting for your pocket book
    and of course, Justice.

  16. 11

    There once was a girl named Sally.
    That did all her best to rally.
    But then with a call,
    they ended it all.
    And took fifteen years of her tally.
    But now she is free.
    with hopes you’ll abide.
    no longer oppressed,
    The Bill of Rights by her side.

  17. 10

    You can fail to describe describe a genus with a single example

    What you have is a classic “how much is enough” problem. Who gets to decide?

  18. 9

    Ned “here we go again” Heller…

    Ned, whenever you use the word invention, the first thing that comes to my mind is invention as claimed.

    Claim your baggage, front and center.

  19. 8

    I’m troubled by this:

    ‘The second question is: can a specification that expressly describes a genus and adequately discloses one or more species fail to satisfy WDI because it does not show, in the court’s judgment, sufficient “possession” of the genus invention? Under the priority principle approach, the answer should be “no.” ‘

    I’m troubled because while Prof. Chisum is rightly saying WDI is separate from enablement, the above instance is IMO a classic case of a *written description* problem, not necessarily an enablement problem.

    You can fail to describe describe a genus with a single example as easily as fail to enable it.

    It seems like the Prof wants to turn WDI into something other than a written “description”.

  20. 6

    A single species anticipates a genus. This may be enough to win an interference. But proofs of prior invention have never involved the issue of adequacy of a written description. That is another issue entirely.

    In many threads now I have tried to make this point, suggesting that if one files the drawings as a provisional application, and the drawings are sufficient to put an invention on sale as in Pfaff, that should be enough to show “possession of the invention” in the sense of a conception. Coupled to that the fact that the papers were filed in the USPTO, and one has proof of prior invention of whatever the papers show.

    But in order to support a claim and a patent, one needs more. One needs a written description of the invention, and of the manner of making and using it. One also has to disclose the best mode. Not all of this is required to win an interference.

    To me, reading the Eaton case, the early Supreme Court case where the difference between a written description of the invention and a written description of what the machine was, and how to make and use it, was the whole point of the case, it is clear what a written description is and how it differs from the enablement requirement. The written description serves like claims to identify the invention and to distinguish it from the prior art. One can describe embodiment after embodiment. But one can never tell from this alone what one considers to be the invention. The written description of the invention serves to separate the wheat from the chaff.

    But such a description is not required to prove prior invention. One does, though, in proving prior invention, have to describe enough such that one of ordinary skill can make and use the invention. But, as I said, more is required to support an effective filing date.

  21. 5

    ***** Typo.

    Edit: after having looked through the paper I see that the reason why I didn’t much pick up what the “the invention
    priority principle” was because you never defined it well. You simply told us what it focuses on. For instance here you describe what it focuses on:

    “The principle focuses on a specific embodiment of a generically claimed invention as
    a constructive reduction to practice, that is, as a completion of the inventive process.”

    But you never tell us what it is. As such, I believe you might have failed to provide WD support for both “patent law priority principle” and “the invention priority principle”.

  22. 4

    In reading your paper I have come across two sections which seem to be, well, how should I put this, incomplete.

    “The second question is: can a specification that expressly describes a genus and
    adequately discloses one or more species fail to satisfy WDI because it does not
    show, in the court’s judgment, sufficient “possession” of the genus invention? Under the priority principle approach, the answer should be “no.” The Ariad opinion does
    not clearly repudiate this approach. Indeed, the court invites arguments that will
    reduce “inconsistencies.” Application of the priority principle will not undermine
    the court’s two clear holdings: that there is a distinct written description and that it
    applies to original claims.”

    You kind of left out that the Ariad opinion based it’s invalidity holding on just such a set of facts. For that reason, I believe you’re going to need to change “The Ariad opinion does
    not clearly repudiate this approach.” to “The Ariad opinion clearly repudiates this approach.” But you could put in some sentences explaining why you like this approach anyway.

    Also, I came across:

    “how would the Federal Circuit’s rulings in Ariad fare in the Supreme Court?

    where you forgot to include the short of the answer which is: it would be affirmed hands down as being a direct application of their own precedent.

    One final thing, as I approached the end of the paper I found myself wanting to know specifically what it was you wanted to consider the “the invention priority principle,”. It seemed as if you never made enough of an impression upon me as to what this special term you were apparently making up should mean. As such I was rather in the dark towards the very end of the paper as to the point you wanted to drive home. As a result, not much was driven home. Perhaps a reminder of what it is in some paranthetical commas would help keep the reader on track throughout.

    Other than that, that was a good paper.

    Edit: after having looked through the paper I see that the reason why I didn’t much pick up what the ” was because you never defined it well. You simply told us what it focuses on.

    “The principle focuses on a specific embodiment of a generically claimed invention as
    a constructive reduction to practice, that is, as a completion of the inventive process.”

    As such, I believe you might have failed to provide WD support for “patent law priority principle”.

  23. 3

    Mr. Chisum, I’m reading your article right now but I just had a thought. I’d like to offer you an advertising agreement. You send me one copy of the most recent version of your volume on Patents and I will agree to use my celebrity to endorse your product twice every week for half of a year.

    If you’re interested, I can be reached at examiner6k@yahoo.com .

  24. 2

    Man, patentlyo law journal is exploding. I should have written an article way back when there were 3 entries.

Comments are closed.