Federal Circuit: Patent Claims Broadened During Prosecution Fail Written Description Requirement

By Dennis Crouch

Synthes USA v. Spinal Kinetics (Fed. Cir. 2013)

In a split opinion, the Federal Circuit has affirmed the jury verdict that Synthes’ asserted patent claims are invalid for lack of written description and has also affirmed the district court’s denial of SK’s request for exceptional-case attorney fees under 35 U.S.C. § 285. Judge O’Malley penned the majority opinion that was joined by Judge Prost. Judge Taranto dissented – arguing that the evidence presented at trial was – as a matter of law – insufficient to prove that the claims lacked adequate written description.

Synthes’ U.S. Patent No. 7,429,270 is directed to an intervertebral implant invented by a team of Swiss researchers. The original application was placed on file as an international application (PCT) in 2003. The U.S. national stage application was then filed in 2006. Five-years into prosecution, the patentee substantially amended the claims and added a new set of claims that were then asserted against SK. Claims 29-31. As part of these new claims, Synthes included the new terms “opening” and “plurality of openings” that had not been used previously in the patent application document. The original disclosure was directed more particularly toward grooves rather than the seemingly broader term openings. According to SK, Synthes added these limitations to the claims only after the accused SK product was on the market in a calculated attempt to shift the scope of the patent to cover SK’s improved technology. Under US patent law, that sort of intentional shifting of patent claim scope is permissible so long as the amended claim is sufficiently supported by the original disclosure. See See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 909 n.2 (Fed. Cir. 2004).

It is not surprising that the infringement litigation turned on the proper construction of the “plurality of openings.” As is usual for patent litigation, the patentee was working to find a “right-sized” patent that was broad enough to cover the accused product but narrow enough to still be valid. Here, the approach was to create a term “opening” in an implant-plate that was generic enough to both (1) be described by the disclosed radial plate grooves and (2) capture the elongated circle slots of the accused device. However, the jury sided with the accused infringer and found the claims invalid under the written description doctrine.

On appeal, the Federal Circuit affirmed – finding that the substantial evidence supported the jury verdict.

Sufficiency of written description requires that the original disclosure reasonably convey to PHOSITA that the inventor had possession of the claimed subject matter at the time of filing. The exact level of detail required depends upon “the nature and scope of the claims and on the complexity and predictability of the relevant technology.” See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).

In affirming the jury verdict, the basically followed the precedent of Leibel-Flarsheim to find that increased breadth-of-claim was not supported by the more narrow original specification. In particular, the court noted that the original disclosure only included “groove” examples, not slots or openings on the plate. (“The written description, however, never discloses anything broader than using grooves to anchor the fiber system to the cover plates.”) That intrinsic evidence was then bolstered by expert testimony regarding the important differences between grooves, slots and other openings. Based upon this evidence, the court found substantial evidence for the jury verdict of invalidity.

[T]he jury was asked to determine whether the written description disclosure of “grooves” “reasonably convey[ed] to those skilled in the art that the inventor had possession of [an intervertebral implant that could utilize any sort of opening located anywhere on the cover plates to anchor the fiber system] as of the filing date.” Ariad, 598 F.3d at 1351. The jury did not believe so and, when all reasonable inferences are drawn in favor of the jury verdict, we must affirm that decision.

One tricky issue here is the various burdens. On review, the appellate court looks for substantial evidence (more than a mere scintilla) but the jury had to find clear and convincing evidence of invalidity.

Writing in dissent, Judge Taranto framed this case is one where the “structural claim language … is broader than the specific embodiments disclosed in the written description.” Of course, Federal Circuit precedent allows claims to be broader than the specific embodiments. See In re Rasmussen, 650 F.2d 1212, 1215 (CCPA 1981). According to Taranto, in this type of situation (alleged over-breadth), the challenger must show that the “particular difference” between the claim and the disclosure “has a material effect on whether the product or process would achieve the aims of the claims at issue, with materiality of the effect not the same as non-obviousness but related to predictability.” In other words, broader conceptions of the invention that would be predictable by PHOSITAs mind after reading the specification should be deemed to fit within the written description.

= = = = =

On the concept of attorney fees under 35 U.S.C. § 285 – the court reiterated its rule sanctions against a losing patentee can only be imposed after a showing of clear and convincing evidence of either (1) litigation misconduct; (2) bringing the litigation in subjective bad faith; or (3) bringing objectively baseless litigation. Here, the appellate court agreed with the district court that SK had failed to demonstrate clear-and-convincing evidence of any one of those three justifications for fees.

49 thoughts on “Federal Circuit: Patent Claims Broadened During Prosecution Fail Written Description Requirement

  1. As I suspected, the claims were allowed for entirely different reasons than the form of attachment of the fibers to the cover plate. The examiner’s reasons for allowance included this:”"[The] prior art of record fails to show the central portion of the invertebral implant having a core with an elastic body that is at least partially surrounded by a fiber system, and an elastic sheathing system such that the fiber system is wound on the elastic body. Newly cite reference… shows an implant having a central part having a core with an elastic body… filled with a material within a fiber system…, however, the fiber system is not wound on the elastic body, but only serves to act as a barrier to contain it. Furthermore, [the reference] fails to teach a sheath around the central portion.”The end result here is totally unacceptable because the infringer apparently was able to misappropriate the invention and have the relevant claims declared invalid on the completely inconsequential “groove” vs. “opening” controversy.

    1. The end result here is totally unacceptable because the infringer apparently was able to misappropriate the inventionThe end result was certainly unacceptable to the patentee, but he has nobody to blame but himself, and at least we have a new poster child for ending the commoditization of patent drafting services.Also, I’m not sure it makes sense to talk about “misappropriating” an invention that is not only unclaimed but unclaimable based on the spec as filed. There’s nothing remotely sinister about practicing someone else’s unpatented invention, assuming the accused device was even someone else’s invention at all.

        1. They did claim the inventionThey claimed the invention they claimed. That’s an unhelpful tautology. They had no business stopping other people using what they didn’t claim.If they described or claimed a feature narrowly that wasn’t even needed for allowance, that’s even less of a reason to sympathize with them and broaden their claims either in prosecution or in court.

          1. IANAE, Have you ever heard of Phantom Count practice — the way one decides who has priority of invention when interfering patents and applications have claims that include immaterial differences? When one is looking to find possession, one looks to what defines over the prior art and determines whether the inventor possessed THAT. One does not look to determine whether the inventor had possession of irrelevant detail in the claim that could just as well have been placed into a dependent claim.Thus two inventors claim a picture frame, but one claims a nail and the other a screw for attaching the frame members. The phantom count would be simply requiring the members be attached.This is not to suggest that one does not have to prove every inconsequential detail in the claim when proving infringement. But when one is determining “possession,” one should not look to unnecessary detail.Taranto got it right.

    2. And, might I add, the written description requirement is of the “invention.” With respect to prior art elements that form no part of the invention, their needs to be no disclosure at all. One does not have to provide details of known ways of capturing thread in a button if all that is required is that the thread be captured by the button. The button analogy is apt here because that was the function of the cover plate — to capture and anchor the threads.This case should have ended with the observation that grooves were a form of opening. Generalizing the prior art ways of doing things is always proper. That is why means plus function claims are historically important – to disclose one way of doing something and generally capture all known ways of doing that something using means plus function.What happened in this case was a travesty. It was born from ignoring the substance of what was going on and trivializing the statutory requirement to describe “the invention” to a requirement to describe the prior art.

  2. All parties agreed that a groove was a form of opening. According to Taranto, the issue then because whether the differences between opening and groove were material from the point of view of the invention. If so, the term opening was not supported by the written description.Here the only differences were that the groove extended the opening to the periphery of the cover plate. But this was immaterial for the purposes of the invention. What was material was that both a groove an opening allowed fibers to attach near the center of the cover plate.I have often argued that a claim should not extend beyond the disclosed embodiments and equivalents. I was satisfied with Taranto’s dissent that, while an opening was broader that a groove, the differences between the two structures were immaterial from the point of view of the invention and for that reason they were equivalents.

    1. Here the only differences were that the groove extended the opening to the periphery of the cover plate. But this was immaterial for the purposes of the invention.This is why it’s a good idea to hire a competent patent attorney (or agent) who is skilled in the art to assist you with the drafting of your application. A competent drafter will recognize “immaterial” differences and describe the invention using the broadest applicable term, and then list various species that fall within that term. It’s not the job of courts — it can never be the job of courts — to rewrite claims or specifications for applicants years after the fact, simply because the patentee finds itself lusting after a pot of gold that it wasn’t imaginative or skilled enough to describe in the first place.the differences between the two structures were immaterial from the point of view of the invention”Immateriality” between “structures” is not the issue. The issue is whether the indisputably broader term “opening” used in the claim was supported by the disclosure of “grooves” (and only “grooves”) in the specification as filed. That’s a slam dunk. The answer is “no.”

      1. Wow, MM wrote something I agree with for perhaps the first time in years.>This is why it’s a good idea to hire a competent patent attorney etc…But, I think the issue of whether or not you need literal support for the WD requirement is more of gray line. Here, the question is the following: are the holes a solution that a PHOSITA would employ instead of the grooves. If the answer is yes, then you should be able to claim the holes. But, you know, another question is: is there a word that would cover the grooves and the holes and the grooves are just an example of that word. You know this business of what set of solutions the claims cover is another one of these issues that is fueled by the haters. The real people that care about the law see that what you want is for patent drafters to be able to focus on the invention and not all the many, many ways to implement the invention that are well known. For example, we have to a processor in every software application. That is ridiculous and clear and convincing evidence that the haters are destroying our system.Another one is Benson and algorithms. Watch the posts from Chomsky and 60 Minutes with MIT AI researchers. All three say that algorithms are the invention. And, yet you see my tiny brained friends, what Benson did was make it so rather than claiming algorithms people obscure the invention by applying it to an area –when in information processing that is really not where the invention is.So, the haters have destroyed our patent system from the inside. Just think haters, for what you perceive as the greater good of your wallet you have destroyed the greatest system that ever was to encourage innovation. I guess you are all fans of Breaking Bad. We need to shave Lem$ey and R$eich (and MM).

        1. the question is the following: are the holes a solution that a PHOSITA would employ instead of the grooves. If the answer is yes, then you should be able to claim the holes. But, you know, another question is: is there a word that would cover the grooves and the holes and the grooves are just an example of that word.The terms “genus” and “species” leap to mind. You seem to be suggesting that if I disclose only a single species in my application that I’m entitled to later claim the entire genus covering that species if I can “prove” that the alternatives work just as well.Again, for better or worse, the doctrine of equivalents exists to save applicants who were deemed incapable of describing a trivial variant of their disclosed invention. But there are strict limits on the application of that doctrine. One of them is that you don’t get to rely on the doctrine if it’s clear that you could have disclosed the variant when you filed your application but chose not to. Taranto just drives a truck through all these considerations because, apparently, he feels pity for this poor patentee who managed to protect its own product from being copied but failed to destroy its competitors. Boo hoo.

          1. MM, this is not a genus and species issue. It is common solutions to problems. If someone wants to claim a hinge as part of a new type of door they shouldn’t have to disclose every type of known hinge. (or disclose a processor with every information processing application).Again, this is obviously a hot point for the haters. Try to be governed by the inventions which is what you should be doing. The haters are trying to cut claim scope down to actually disclosed solutions which is ridiculous. The solutions should cover all that a person of ordinary skill in the art knows. Applications should be efficient and geared to the invention. (I know there are many cites to that.)You haters just try to break the system at every turn. You must have zero conscious. It must be a dark and lonely place to be without the law. The law and applying the law is where I get my energy.

            1. If someone wants to claim a hinge as part of a new type of door they shouldn’t have to disclose every type of known hinge.That’s not the issue here. The issue here is when you refer solely and repeatedly to a “barrel hinge” as a component of your invention in your original filing and then years later a competitor makes an embodiment with a “pivot hinge”. You can’t go back and pretend that you were in possession of that broader embodiment and write a new claim that recites only the broad “hinge” genus. Because you weren’t in possession of that genus. You either chose not to describe that embodiment as your invention, or you hired an incompetent drafter. Either way, the correct result is: you don’t get to leech off the work of others who relied on your narrow teaching and designed a work-around.The haters are trying to cut claim scope down to actually disclosed solutions which is ridiculous.It’s not ridiculous at all. It does minimize your chances of striking gold with a broad claim that you aren’t entitled to, which I’m sure some people find deeply upsetting. Unfortunately for you, those people are a tiny tiny tiny tiny tiny minority of the US population and most ordinary people consider patent gamblers and trolls to be liittle more than obnoxious grifters and money-grubbing tools.

            2. Who needs any (actual) doctrine of equivalents in the Malcolm’s (self-delusional) “right” way of picture claim drafting?His lack of understanding of ‘equivalents’ and how other art units routinely draft claims is on stark display.

            3. lack of understanding of ‘equivalents’Your doing your “crazy person” shtick again, Trollboy. If you disagree with something I said, repost the statement you disagree with, then explain in clear terms why you disagree with it without the personal insults. Good luck.

          2. “deemed incapable of describing a trivial variant”If you are going to preach that ‘words matter,’ you need to do a better job of choosing words that are more neutral and do not betray your anti-patent sentiments.How is anyone deemed incapable of describing a trivial variant? The words clash, as trivial means so readily obvious as to not merit mention – quite different than any hot-button word indicating lack of capability. Your disdain for your own profession is palpable. Once again, I advise you to get into a profession in which you can believe in the work product produced.

        2. NWPA: you have destroyed the greatest system that ever was to encourage innovation.Hmm. How do you explain the record number of requests to take advantage of this “destroyed system”?

        3. “Here, the question is the following: are the holes a solution that a PHOSITA would employ instead of the grooves. If the answer is yes, then you should be able to claim the holes.”everyone seems to have their own pet theory as to what it takes to satisfy 112 1st WD in leiu of the actual law that states clearly you must show possession. That is not a statement that you must show that the new term you’re going for is a solution that a POSITA would employ instead of what you disclosed. And even if the answer is yes, you still lack wd.

        4. “All three say that algorithms are the invention”I’m delighted to say I concur, and will be happy to give them a 101 for their “invention” all day long. Likewise, if they will be so kind as to say that on the record I’ll be sure that 112 2nd ensures that the algorithm is exactly what they claim, since they subjectively feel that it is the invention.

        5. “I guess you are all fans of Breaking Bad. We need to shave Lem$ey and R$eich (and MM).”I sure am! And my head is already shaved for a WW Halloween!

      2. I’m sorry, Malcolm, but everyone agreed that groove was a form of opening, and as pointed out by the dissent, the differences between the broader term and the narrower were immaterial. There is no “slam dunk” no. There is rather a slam dunk “yes.”

        1. everyone agreed that groove was a form of opening,Right, that’s because a groove is a form of opening. But that’s not the issue here. The issue is that an “opening” includes non-groove openings and embodiments with non-groove openings weren’t described by the applicant as being the applicant’s invention until (surprise!) someone else made them.Let’s look at this way. Applicant files a specification that refers, in every instance and in every specific embodiment, to one element of the invention as a “red widget”. Ten years later, a competitor (who understands that “red” is a narrower species of “color”) markets a product that is identical to applicants disclosed invention except it has a blue widget. Applicant files a continuation with a claim reciting a “colored widget”. The claim is granted.Now, “everyone agrees” that a “red widget” is a form of a “colored widget.” And it’s inevitable that the patentee will pay an expert to tell everyone that whether the widget is “red” or “blue” or “green” is immaterial. But that’s not the point. The point is that words matter and if you realy believed that your invention included embodiments with “colored widgets” you should have said so when you filed the application. Any other “test” makes a mockery of claim construction and the entire practice of preparing patent applications. Heck, according to Taranto’s logic we should just file a picture of one embodiment, claim whatever we feel like and cross our fingers that the Examiner drops the ball, and then argue in court about whether the differences between the picture and the accused device are “material.” My god that sounds about as bad as current case law for design patents.

          1. Malcolm, all that was required is some mechanism for attaching the fibers to the cover plate — near its center. The invention had nothing to do with the particular form of attachment despite your repeated insistence to the contrary.What you seem to misunderstand this very point. All the patentee did was remove unnecessary limitations. The claims still read on the specification, because grooves were a form of opening. But, as Taranto noted, the function of attachment did not require that the opening extend to the periphery. IMHO, the patentee here got hosed.

            1. The invention had nothing to do with the particular form of attachmentAgain, you speak of “the invention” as if this legal concept exists independently of the words used to describe it. It doesn’t. The words describing the “invention” are the invention, for legal purposes, and vice versa.All the patentee did was remove unnecessary limitations.No, that’s not all the patentee did. The patentee replaced a narrow term (“grooves”) with a broader term (“openings”).The claims still read on the specificationSo what? A claim to “the earth and everything in it” also reads on the specification. But that wasn’t what the applicant considered to be its invention when it filed the specification.IMHO, the patentee here got hosed.Perhaps, but only by the person the patentee hired to draft the application in the first place (assuming that person was paid).

            2. Malcolm, let me make my point this way because I assume what Taranto said is correct and that the form of the means for attaching the fibers to the cover plate was unimportant. If so, I could have simply amended the claim to recite a “cover plate, said fibers attached to the cover plate…”I have no idea why the patent attorney Who prosecuted this case did not pursue this avenue of prosecution given the what Taranto said about the importance of the physical form of attachment being unimportant.

      3. indisputably broader, but is it indisputably critical to differentiating the invention (you know, the claim as a whole)?Point to Ned in this exchange. “Immateriality” is the issue.

        1. anon, it would really be nice if the court would discuss the prosecution history just a bit to see what the examiner considered to be the invention in his reasons for allowance. If, as I suspect, the form of attachment of the fibers to the cover plate was not at all relevant to the patentability of the claim, any means of attachment would have sufficed, thus one could have claimed “a cover plate, said fibers attached to the cover plate.” On the contrary, had the form of attachment been critical, for example, had the grooves been the sole novelty, then replacing grooves with openings would have made the claims unpatentable.Possession is the key. Understanding what the novelty in the claim is is very important to understanding whether the specification discloses that novelty. If so, the invention is disclosed. The details unnecessary to that invention can be considered like dependent claims — additional refinements that are patentable because the parent claim is patentable.

          1. Ned,Examiner’s statements in the “Reasons for Allowance” are notoriously useless.Nonetheless, the argument here is what constitutes ‘possession.’ My view of ‘possession’ interacts with the Doctrine of Equivalents. To me, that doctrine is to dissuade people from trying to rip off the patent holder by making non-colorable changes to the claimed invention. To this end, I think that you are correct in bringing in the concept of “immateriality.” To me, this is most defintely ‘on point.’Most ‘normal’ people realize that a claimed invention (any worthwhile claimed invention) has been abstracted up from a picture claim, or any single particular embodiment discussed in an application. I have previously supplied multiple authorities on this point.Further, I think the double edged sword of KSR should apply here: just as common sense should prevent someone from obtaining a patent that is an obvious variant, so too a patent holder should be protected from those who would only make an obvious variant.After all, what does the following phrase in KSR really mean?:”Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, for patents combining previously known elements, deprive prior inventions of their value or utility”If you are depriving a prior invention, does that not necessarily mean that a prior patent holder is being ‘ripped off?’ Why else would the Supremes include this notion of a prior invention?

  3. Maybe this would have been better sorted out during the Markman hearing (i.e., you say “opening” in your claim, but the only kind of opening in your original filing was a groove, so we’ll say an opening is limited to a groove).

    1. APoTU, a groove is a form of opening as agreed by all. The grooves extend over the whole surface of the cover plate. The only difference between groove and opening is that a groove extends an opening to the circumference. According to Taranto, this distinction was immaterial for the purposes of the patent. Therefore, as a matter of law, the claims were supported under the WDR which looks to “possession.”

  4. One wonders what result if the specification had said, at least once, “an opening, such as a groove”? Would that have made a difference?And in that case, would reading the “opening” onto SK’s slots perhaps still have been available only under the (limited as MM notes) DOE?

    1. “Would that have made a difference?”It would have made a difference, though it may not have made sufficient difference to ultimately support the claim they’re now wanting. Keep in mind, they originally had grooves at the radial portion. Now they want openings and they want them to be able to be anywhere. That’s not only a gimmie as to the grooves>openings. It’s a gimmie on the location as well.

      1. Thanks. Have only so far read part I of the dissent and wasn’t aware of the “double gimme” (as you might say) nature of the expansion in subject matter.

    2. One wonders what result if the specification had said, at least once, “an opening, such as a groove”? Would that have made a difference?It certainly would have provided the patentee with a much better argument that the applicant was in possession of the broader embodiment that they sought to claim later.in that case, would reading the “opening” onto SK’s slots perhaps still have been available only under the (limited as MM notes) DOEI’m not sure I follow. If the claim recites “opening” without any additional limitations, then the claim is literally infringed by a product with an “opening” that meets all the other claim limitations. Now, given the same facts in your hypothetical, if the patentee decided to assert the claim with the “groove” limitation against an alleged infringer who is practicing the “opening” embodiment (i.e., not the “groove” embodiment), the disclosure of an “opening” in the specification would likely work against a successful d.o.e. argument. Why? Because it would have been considered to have been dedicated to the public by the patentee. The patentee could have written and pursued the broader claim … but it chose not to.

  5. Hey Patent Guru, I guess this is that “weak” WD possession requirement at work eh? lolololol, so weak. Maybe judge Taranto should have just argued that the WD req was weak. That would have garnered him more votes on the panel I’m sure. ” the challenger must show that the “particular difference” between the claim and the disclosure “has a material effect on whether the product or process would achieve the aims of the claims at issue, with materiality of the effect not the same as non-obviousness but related to predictability.” “Man it sounds like he just made that up off the top of his head. “In other words, broader conceptions of the invention that would be predictable by PHOSITAs mind after reading the specification should be deemed to fit within the written description. “No way. That’s just a new school twist on the old school “enablement is the same as possession” argument that they just got through doing away with in Ariad. Preposterous nonsense. Describe your invention people. Don’t expect us to give you a gimmie after you failed to describe whatever you later wish to claim. And you need to do so on all levels of breadth that you feel are necessary to support claims at whatever level of breadth you’re going to want from your application. If you can’t tell what level of breadth that is on day one, then you didn’t possess the invention on whatever level of breadth we’re talking about. I’m sorry, you just didn’t. You may not like your inability to so describe the invention on day 1 but that’s just the way that ball bounces. Either step up or not.

  6. Writing in dissent, Judge Taranto framed this case is one where the structural claim language … is broader than the specific embodiments disclosed in the written description.”In fact, the claim language was broader than the description of the invention anywhere in the specification, period. There was no written description support for “openings” and everybody knows why: that wasn’t the invention so the applicant didn’t bother describing it until it was financially compelled to throw the Hail Mary and file some new claims. Lo and behold, those claims made it past the Examiner (shocking!) but not the jury who apparently learned a lot about patent law and how it’s supposed to work.Taranto (paraphrased): broader conceptions of the invention that would be predictable by PHOSITAs mind after reading the specification should be deemed to fit within the written descriptionThat’s crazy talk. Litigants have the doctrine of equivalents for situations where an infringer is doing something that wasn’t disclosed. And there are strict limits on the application of the d.o.e., for good reasons.

    1. Agreed.When Applicants argue something along these lines during examination, the usual response from the examiner is this form paragraph:The written description “need not recite the claimed invention in haec verba but [it] must do more than merely disclose that which would render the claimed invention obvious.” ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1376-77 (Fed. Cir. 2009).

    2. “And there are strict limits on the application of the d.o.e., for good reasons”You make it sound like the doctrine of equivalents is a bad thing.

        1. Once again, Malcolm, it is not what you want to say, but how you go about saying it.”That’s crazy talk”That’s a silly (and quite unoriginal) new meme of yours that for some reason, Leopold has difficulty seeing as the argument ad hominem that it is.Especially since your ‘paraphrase’ of the actual position is excessively poor and off-base.”broader conceptions of the invention that would be predictable by PHOSITAs mind after reading the specification should be deemed to fit within the written description”Broader? Really? That simply is not what was being said.Nice strawman.Try again.

          1. (and focus on the aspect that what was being said was not broader than predictable) – try not to parse the full phrase in your effort to come across dissing yet another patent.You really need to get into a field in which you can believe in the work product that is produced.

            1. focus on the aspect that what was being said was not broader than predictable”Predictablilty” has no place in a test for satisfying the written description requirement. Even it did, what’s “predictable” is that the applicant knew that “opening” is a broader term than “groove” and yet the applicant never used the term “opening” when describing its invention. The term first appeared only after the applicant saw a competing product that did not infringe the invention that the applicant had originally described.

            2. “”Predictablilty” has no place in a test for satisfying the written description requirement.”Why?

          2. Especially since your ‘paraphrase’ of the actual position is excessively poor and off-base.The text you quoted is not my paraphrase of the “actual position”. It’s Dennis’ paraphrase. And it’s exactly what Taranto is saying in this case.

    3. As I said before, Malcolm, the disclosed grove was an opening within the meaning of the patent and the difference between a groove and the more generic opening lay in the groove having an opening near the periphery. But that was immaterial to the invention as discussed by Taranto.Thus the claim term opening was supported in substance.Your discussion that the opening was “not the invention” is misleading. Rather a limitation to a “groove” essentially put unnecessary limitations into the claim.

      1. a limitation to a “groove” essentially put unnecessary limitations into the claim.No doubt. But that was the choice of the drafter of the specification who either (1) knew what he/she was doing or (2) didn’t know what he/she was doing. Either way, how can the correct result here be to punish a competitor who reasonably relied on the narrow description of the invention? How is the system supposed to work when specifications are treated as amorphous blobs that cover not only what was actually disclosed as the invention but also every possible undisclosed varation that some judge might deem to be “immaterial” years down the road? Again, these same issues presented by Taranto’s logic arose when the doctrine of equivalents started to eat a giant hole in the system. The Supreme Court stepped in and justifiably put some severe restrictions on its application. There is no way around the fact that “inventing”, for the purposes of taking advantage of the patent laws and obtaining a patent, begins and ends with a fixed and definite description of the eligible subject matter that you (the inventor) believe that you invented. And there’s good reasons for that. Whenever we start to move away from that fundamental principle, patent law quickly devolves into little more than relentlessly begging the government and/or judges to discover and descibe for us the inventions that “surely” must be buried in the reams of paper we throw at them.

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