Written Description, Claim Scope, and Showing Possession of Hidden Embodiments

PatentLawImage001Laryngeal Mask Co. v. Ambu AS (Fed. Cir. 2010)

The district court rejected LMA’s patent on summary judgment — holding that the claims covering a laryngeal mask device were invalid for lack of written description.

The written description issues here are similar to those presented in Liebel-Flarsheim and Lizard Tech.  The patented invention included both (1) a “cuff” with a “thicker and stiffer” region and (2) a “backplate.”  The described embodiments all showed the thick-stiff region of the cuff connected to the backplate,  but the accused device’s cuff-backplate connection was in a different location. The claims themselves did not expressly limit the connection-site with reference to the thick-stiff region and therefore arguably covered the accused device.  Given that broad construction of the claims (as requested by the patentee), the district court held the patent invalid on written description grounds because the patent document failed to describe or show possession of the invention as embodied by the accused device.

On appeal, the Federal Circuit panel of Chief Judge Rader, Judge Lourie, and Judge Moore rejected the district court’s findings — holding instead that the factual question of written description should be left for the jury in this case. 

Rather than focusing on affirmative evidence of possession, the Federal Circuit highlighted that nothing in the specification suggested that that design of the connection between the cuff and backplate was important or necessary to the invention.

“We agree with LMA that one of ordinary skill in the art could read these disclosures as providing for a cuff reinforcement in the distal region that need not be connected to the backplate. In addition, we agree with LMA that one of ordinary skill in the art could read the Cuff Wall Thickening Passage as disclosing a thickened cuff portion that need not be connected to the backplate.”

Because those factual conclusions raised issues of material fact, the appellate panel reversed the summary judgment holding and remanded.

The Court’s approach implicitly presumes that the asserted patent satisfies the written description requirement and then looks to see whether the evidence is sufficient to overcome that presumption. That method of analysis makes sense based on the procedural setup of the case: Namely, (1) clear and convincing evidence is required to prove that the patent lacks written description; (2) the decision being reviewed was one of summary judgment; and (3) written description is a question of fact.

Notes:

  • The court also reversed a claim construction holding that had led to summary judgment of non-infringement.
  • The asserted claims were all added during prosecution. The original claims required that the backplate be “hermetically bonded to a periphery of the main-cuff” and the new claims have a seemingly broader requirement that the backplate be “attached” to the cuff.  The original claim appears broad enough to cover the link as embodied in the accused device.

 

 

40 thoughts on “Written Description, Claim Scope, and Showing Possession of Hidden Embodiments

  1. 39

    IANAE, as we previously discussed,”consistent with the specification” has essentially no meaning in the context of “broadest reasonable interpretation” as interpreted by the patent office and by the Federal Circuit in the case of In re Morris. Claim terms are given their common, ordinary meaning as understood by one of ordinary skill in the art to which the application pertains. They are never given a particular meeting unless the term is defined in the specification or their use in the specification renders no other meaning reasonable.

    “Consistent with the specification” in the courts means, among other things, that when a claim term can be construed in more than one way, a construction that does not read on any of the preferred embodiments is wrong.

    So it appears that the patent offices quite within its rights to give wild and crazy interpretations to claim terms that have more than one meaning, including claim terms such as “connected” that have common meanings, without regard to whether the construction actually reads and any of the preferred embodiments. But when they do, they seem also be entitled to enter a section 112 rejection essentially saying that the claims are not supported the specification, which on the face of it, seems ridiculous.

    There is something very very strange about the patent office administration of “broadest reasonable interpretation.”

    While all of this might be justifiable for the purposes of clarifying the claims by amendment, it often requires an additional round of actions and amendments in order to clarify the claims. I have no fundamental objection to this during the original ex parte prosecution. But when the patent office does it during re-examinations, the result is an abuse of process.

    If you want to compare notes on why In re Suitco in and In re Morris came out differently, Suitco was a re-examination while Morris was an original ex parte prosecution. This explains everything to me. During re-examination, a claim construction that does not read on the preferred embodiments ought to be rejected. The same considerations regarding the rights of patent owner to past damages, for example, are not present (to the same degree) during the original prosecution.

    It appears that the Federal Circuit might be edging away from broadest reasonable interpretation for re-examinations, which is entirely right in my view.

  2. 38

    Ned: He seemed to be of the view that if a claim as construed was actually not described in the specification, it was invalid under §112. He was totally resistant to the view that the claim had to be construed to be consistent with the specification and should not be construed to render the claim invalid under §112.

    What would be the point of 112, then, if “112 may not invalidate a claim” were a rule of construction at any stage?

    I suppose I should be quicker to appeal 112 rejections. Clearly those are all based on legally impermissible constructions.

  3. 37

    Goose – Gander

    or

    Goose – Maverick

    or

    …is cooked?

    Paul,

    When you say the results aren’t always pretty, is this a tacit statement that the results sometimes are pretty?

    Let me get my scholarly moment of the day:

    Welcome to the game. – Posted by: ping | Sep 25, 2010 at 11:36 AM

  4. 36

    If you read Fundamentals of Patent Drafting and learn and apply the checklist at page 245, you will probably get the claim scope right at the start of the process, or at least a broader claim that can be narrowed down to something useful. But I would say that, wouldn’t I?

    What we cannot do is to claim what our clients have not yet invented based on the knowledge they will acquire tomorrow. Attempts to try are frequent and the results are not always pretty.

  5. 35

    AI what makes you think Goose is 6. The older a patent practitioner (or examiner) gets, the more he or she realises the importance of competent drafting.

    If you are curious, you can examine on the EPO website all the drafting papers of past years, that you need to pass to qualify as a European patent attorney. EPO people (experienced ones) are on the Committee that sets the drafting task, in the exam paper. One question. Four hours to do it. If I remember right.

  6. 34

    @ MaxDrei: I’m sure it was an attorney from one of those big law firms and/or top tier law schools. Working as an examiner for almost 20 years, I find that they know the least about patent prosecution. They do, however, know how to take an exam but they absolutely suck when it comes to prosecuting cases. I spend half my time teaching these retards how to do their work.

    Posted by: Goose | Sep 26, 2010 at 08:52 PM

    __________

    6, in order for you to have worked as an examiner for 20 years you would have had to start when you were like 4 years old. Although judging from your posts I can’t say you have matured much since then.

  7. 33

    @ MaxDrei: I’m sure it was an attorney from one of those big law firms and/or top tier law schools. Working as an examiner for almost 20 years, I find that they know the least about patent prosecution. They do, however, know how to take an exam but they absolutely suck when it comes to prosecuting cases. I spend half my time teaching these retards how to do their work.

  8. 31

    Maxie,

    Your German and English into EP harmonisation story is nice, but it aint answered the questions I posed to you. If ya think my blah-blah-blah is that same response to your typical blah-blah-blah, then answer teh questions I keep askin ya when your blah-blah-blah keeps showing up no matta what the thread topic be (your “shapin” aint workin pallie). The US patent is your competition. Your lack o understandin of it is blatantly obvious to even the most casual observer and ya aint foolin no one with your philosophical drivel aimed at supplanting the US patent.

    Ned – you admonishing AI to be clear brings the chuckles. Specially when your statement to 6 was so unclear (given 6’s expertise in the food industry). Ain’t no one taught you to read in context? Clearly, “IT” be “step and/or part that is a must, essential, or required” and “WHAT” be the claim, as it be claims with “IT” that be needed to overcome prior art. What else could AI’s statement mean? Did I get that right AI?

  9. 30

    ping as to “harmonisation” I have found in Europe that the 1973 harmonisation of German national patent law and English national patent law, hitherto poles apart, in the European Patent Convention, made the substantive patent law of both countries “stronger” than it was before. I watch with interest how Asian countries writing their patent laws pick and choose from the European and US patent law models on offer. I think both the USA and Europe would gain from harmonisation now, just as the UK and Germany did, in the 1970’s. The process hones down the law to the irreducible minimum, and cuts out the accumulated dross and curlicues of centuries of law-making.

    That said, I can well understand your antipathy to the idea of adopting in the USA any part of harmonised ROW patent law. That would certainly be my reaction, should you ever urge me to sling the harmonised European substantive patent law, and adopt instead the present US substantive law of patents.

    As to “trolling” the thread, I’m not sure what that means. I shape my contributions to fit the individual subject. I get thoughtful responses that maintain the momentum. And I get your response, always the same, regardless of the subject of the thread. We all have our own different viewpoint, and angles to run. What’s wrong with that?

  10. 28

    Welcome to the “McPatent” approach in the United States! If you avoid using patent profanity like “must” or “essential” or “requires” or “the invention,”

    ____

    Whoa there!!!! Now if your invention has a step and/or part that is a must, essential, or required then you need to put it in to overcome prior art. This can be especially advantageous if the prior art teaches something is not required or a must do or have. Then you have overcome 102 and 103!

    BTW, Actual Inventors never hire any attorney that has a fast food approach to patent prosecution.

  11. 24

    Comparing the example given by David French, and the concerns expressed by Maxi, I think the answer lies in what the specification teaches as critical. Max was concerned that the claims indicated the criticality of the tube joint simply by reciting them in the claims. In US practice, however, what the claims state at any point is not to be taken as a statement that the terms in the claims are critical to the extent that claim terms cannot be deleted. They are only required to be in the claims if the specification states that the claim terms are critical and essential for the invention the work.

    Now the facts as summarized by David French are puzzling – because in the end the claims covered an embodiment described the specification as an embodiment that would not work. I think there is something very wrong in the result in this case.

  12. 23

    Beauty be in the eye of the beholder, just as much as annoyance.

    7, ya gonna have to deal with it. Try and expand your horizons a wee bit, aye? Get off your hoighty-toighty “this must be proper English” throne and go wid da flow.

    As anonymous alludes to, there be a reason why it is called “prosecution” when that word has distinctly different undertones in other areas of law.

    Welcome to the game.

  13. 22

    Max wrote: I had thought that higher invention analysis standards were expected of specialist attorneys, whose particular professional skill and judgement lies in drafting useful claims, the cost going up in proportion to hourly rates charged.

    Welcome to the “McPatent” approach in the United States! If you avoid using patent profanity like “must” or “essential” or “requires” or “the invention,” you can simply dump details into a description without much thought about the claims (because those can often be fixed later during prosecution). And because you can often fix the claims later, you don’t have to do any prior art searching, which brings the cost-per-patent-filing down. Of course, there’s a risk that you’ll discover that a patent application might not include patentably distinguishing detail once the prior art is known. But many companies will opt for this “McPatent” approach because it maximizes potential coverage.

    The professional skill comes into play at the drafting stage to make sure the description is complete and doesn’t use the patent profanity. The professional skill comes into play later when the original claims are scrapped in view of prior art search the examiner performs and new claims are prepared in view of what was dumped into the spec.

  14. 20

    Terrified” – I LOL ya Maxie.

    All Iza got ta do is repeat the same questions every time ya run down this road – How does “harmonisation” make the US patent better? and Why would ya want to make a patent “better” by making it weaker?

    Ya never seem to have answers to these question, but ya sure like to ask the questions again (and again and again).

    I would say ya be trollin, but Iza fraids that I would offend the Trolls by associating your tactics with them.

  15. 19

    Good David. For somebody in Europe, this all just looks like 30 year old EPC FtF, after a long gestation period, finally infecting thinking in the rest of the world. Think: Trilateral Offices, The Group of 5. CJ Rader always over here chatting to leaders of European opinion. The world gets ever-smaller.

    No wonder US patent attorneys are terrified of “harmonisation”.

  16. 18

    David French writes:

    I don’t have much time so I’ll give a quick statement and particulars later.

    In the original Xerox patent application, 1937, the inventor used sulfur as the charge-supporting surface. This was charged tribo-electrically. The inventor stated in the disclosure that a little selenium could be added to the sulfur, but that a pure selenium surface would not work.

    However, claims were included in the final grant that were not specific to sulfur and would admit coverage of a pure selenium surface. Commercial usage later established for plain paper copiers was based on a pure selenium toner-support surface. Charge was deposited using corona discharge.

    Is this a case where the inventor did not have “possession” of the invention that the eventual final claims covered?

    This is a hard new issue of patent law. I’m having difficulty understanding it.

  17. 17

    Max, FYI, the US patent bar exam is 100 multiple choice questions. One’s skill in claim drafting is not tested on the patent bar exam, only knowledge of the rules and patent office procedures.

  18. 16

    Monkey, I don’t understand your last remark. Wasn’t it only because the originally filed claims were so narrow, that the defendant was bold enough to infringe?

    As to your “bigger than you first thought” point, I agree this is common, for inventors. But for professional trained, qualified patent attorneys? I had thought not.

    I had thought that higher invention analysis standards were expected of specialist attorneys, whose particular professional skill and judgement lies in drafting useful claims, the cost going up in proportion to hourly rates charged.

    My “how much” question was rhetorical. I had thought that to be obvious.

  19. 15

    Reading comprehension should be the first telltale sign of a good examiner. And why would the examiner with a good comprehension not say OOPS my bad. Then the next telltale sign in hiring a good Examiner is an average EGO. Able to accept a bad decision and then fix it.

  20. 14

    ) How much ordinary skill did he display?
    To the extent one can meaninfully answer such a question, I’d say about 14-15 OSU (Ordinary Skill Units). Not sure how to convert that to metric for European consumption.

    ii) Is one’s mean OSU level tested?
    Yes, there is a patent bar exam to test that.

    iii) How much litigation would have occurred?
    All of it. It is not uncommon to realize that what you invented is bigger than you initially thought.

  21. 13

    And also you must take into account,how much ordinary skill did the examiner display in reading and defining what he claims to have been reading in the first place.
    I have a brilliant idea. Read the whole application why don’t yah?

  22. 12

    Tell me, have I got this right:

    1. Clients pay patent attorneys to draft useful claims. That’s our profession. We sort out what features are essential, from those that are not.

    2. Here, the claims as filed all reported that the tube joint was an essential feature.

    3. Then the prosecuting attorney saw the competing device without any joint, struck the joint from the claims and got the case allowed.

    4. Then the litigation and the J. Moore opinion (page 12, first full para) that……sorry, but…..”one” of ordinary skill would NOT “conclude that the backplate must have a tube joint”.

    5. So, my questions: i) how much “ordinary skill” in writing patent claims did this attorney display ii) in the USA, is one’s level of “ordinary” skill in claim drafting examined, before one is let loose on the American public as a patent attorney, duly qualified by public examination, to draft patent applications and iii) how much of this litigation would have occurred, if the originally drafted claims had not recited that the tube joint was an essential feature?

  23. 11

    I took a look at this month’s BPAI decisions discussing written description – almost all reversals. Nobody’s hanging their hat on written description.

  24. 9

    So, if I claim “detached,” I have to describe it. But if I do not claim whether it is detached or not, and the construction of the court is that it can be detached, it appears that the specification does not need to show or describe a detached condition. This seems reasonable.

    In fact, if the specification said that the reinforcement section of the cuff had to be attached to the backplate, and the claim construction said otherwise, it would not be a §112 problem, but a claim construction issue.

    At least that’s my opinion – IANAE and I had a significant discussion on this issue just recently in connection with the In re Morris case. He seemed to be of the view that if a claim as construed was actually not described in the specification, it was invalid under §112. He was totally resistant to the view that the claim had to be construed to be consistent with the specification and should not be construed to render the claim invalid under §112. But this course was in the patent office, where broadest reasonable interpretation is the rule. But, as we discussed then, “consistent with the specification” apparently means something entirely different in the patent office than it does in district court.

  25. 4

    The asserted claims were all added during prosecution. The original claims required that the backplate be “hermetically bonded to a periphery of the main-cuff” and the new claims have a seemingly broader requirement that the backplate be “attached” to the cuff. The original claim appears broad enough to cover the link as embodied in the accused device.

  26. 3

    Thanks for your non-help, 6.

    Here are a copuple of relevant excerpts from the case:

    The prosecution history also indicates that the back-plate is not required to have a tube joint. Just prior to issuance, the applicant deleted language concerning the airway tube and the tube joint. Reply to Office Action dated Oct. 19, 2005, at 2 (Apr. 19, 2006). The claims previously required that the backplate include a tube joint in the pharyngeal side of the mask. See, e.g., U.S. Appl. No. 09/412,954, 19 (Oct. 5, 1999); Reply to Office Action of Dec. 15, 2004, 2 (Jun. 15, 2005). The applicant deleted this requirement from the claims. See Reply to Office Action dated Oct. 19, 2005, 2 (Apr. 19, 2006). Following the amendment, the Examiner allowed the claims without any objection to or rejection of the deleted airway tube or tube joint language. See Notice of Allowance (Aug. 23, 2006).

    The Summary of the Invention further states that “[i]n a preferred aspect,” the rein-forcement extends from the backplate. See id. at col.1 ll.64-67. We agree with LMA that one of ordinary skill in the art could read these disclosures as providing for a cuff reinforcement in the distal region that need not be con-nected to the backplate.

  27. 2

    “Were those the claims as originally filed?”

    Wut do you think? I can’t tell you yay or nay tho since I might know secrits. Surely this case should be available on PAIR.

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