CAFC Written Description Jurisprudence: “OPAQUE”

LizardTech v. Earth Resource Mapping (Fed. Cir. 2005) (on request for rehearing).

Plaintiff LizardTech lost its case at the Federal Circuit because its written description was lacking. 

The asserted patent was related to the use of discrete wavelet transform (DWT) to compress digital images. The specification provides an example method for creating a seamless DWT.  One of the claims included a claim to seamless DWT without including all of the limitations of the example method.

In its original decision, the CAFC stated the rule that a claim will not be invalidated under Section 112 for only disclosing a single embodiment.  However, the court went on to determine that the claim in question was improperly directed at “all seamless DWT’s” — a coverage not adequately supported by a single embodiment.

The CAFC has refused LizardTech’s request for rehearing, but has issued concurring and dissenting opinions.

Lourie, Michel, Newman: Disclosure containing only one embodiment will result in limiting the scope of the claims to cover only that embodiment.

[Claims] must be interepreted, in light of the written description, but not beyond it, because otherwise they would be interpreted to cover inventions or aspects of an invention that have not been disclosed. Claims are not necessarily limited to preferred embodiments, but, if there are no other embodiments, and no other disclosure, then they may be so limited. One does not receive entitlement to a period of exclusivity for what one has not disclosed to the public.

Rader, Gajarsa:

“This court’s written description jurisprudence has become opaque to the point of obscuring other areas of this court’s law.” 

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