Written Description, Disclosed Embodiments, and BRI

By Dennis Crouch

The vast majority of written description problems arise when the patentee amends or adds claims with limitations not found in the original claim set and using language that does not directly map to specification disclosure.  In Cisco Systems v. Cirrex (Fed. Cir. 2017), the Federal Circuit provides an example of this in practice.

[The Decision: Cisco]

After the PTO initiated an inter partes reexamination, the patentee (Cirrex) dropped the original claims (1-34) and added new claims (35-124) of its ‘082 patent.[1]  In its final decision, the PTAB affirmed the examiner’s decision that most of the added claims were invalid as lacking written description support.  The Board did, however, find five of the claims patentable.  On appeal, the Federal Circuit partially reversed – finding all of the claims invalid as lacking written description support.

35 U.S.C. § 112(a) serves as the statutory source for three patentability doctrines: Written Description, Enablement, and Best Mode.

(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

In Ariad, the Federal Circuit wrote that the original written description filed by the patentee must “clearly allow persons of ordinary skill in the art to recognize that [he] invented what is claimed.”[2]  Channeling the old fox-law case of Pierson v. Post, courts have held that the requirement is intended to show “possession” of the claimed invention at the time of filing.  Whether the written description is sufficient is a question of fact – with the level of detail depending upon “the nature and scope of the claims and on the complexity and predictability of the relevant technology.”  Thus less description is necessary to show possession in simple technologies in predictable areas.  More description is likely required to show possession of novel structures and arrangements as compared to elements found in the prior art.

Here, the added claims at issue here are related to either equalization or discrete attenuation of fiber optic signals inside a lightguide (PLC).

The problem for Cirrex, according to the court, is that the original specification “lacks any disclosure or suggestion of how placing attenuation material inside the PLC … would result in equalizing the intensities of different wavelengths traveling in the PLC, or discretely attenuating a particular wavelength in the PLC.”  Rather, the disclosed embodiments teach equalizing to light energy outside the PLC and only collective (rather than discrete) attenuation within the PLC.   As such, the Federal Circuit held the claims lacked sufficient written description.

= = = = =

Alt: Essential Element Test: An interesting issue that the court avoided stems from an odd line of written description cases that center on what the Federal Circuit repeatedly denies is an “essential element” test.  In Gentry Gallery, Inc. v. Berkline Corp.[3], the patentee amended claims to remove a previously recited limitation (placement of recliner controls between two recliners).  In that case, the court held that the broader claim lacked written description since the specification indicated possession of only a much narrower invention.  The basic conclusion is was that since the specification consistently described the invention as including “A, B, and C all connected together,” the patentee cannot broaden its claims to claim just A and B connected together (even if there would be no enablement problem).  Whenever the court cites Gentry, it almost always restates the seemingly contrary statement that this test should not be seen as an ‘essential element’ test but rather merely an inquiry as to whether the inventor possessed the invention now claimed.

Here, the challenger argued, in the alternative, that if the claims should also be invalid if interpreted to be broad enough to include equalizing activity whether inside or outside the PLC.  The problem is that all disclosed equalizing includes operating on signals outside the PLC, and the challenger argued that the disclosure does not then extend to the full scope of the claims.  This argument roughly follows the LizardTech decision where the court held that a broadened claim lacked written description because there was no showing of possession of the “full breadth of the claim.”[4]

This alternative argument was avoided in the appellate decision because the court more narrowly interpreted the claims as discussed above.

= = = = =

Broadest Reasonable Interpretation vs. Interpretation Most Likely to Invalidate: The court here did not discuss how BRI applies to its claim construction approach.  The theory behind BRI is that a broader claim interpretation typically makes it more likely to invalidate claims, and that approach helps ensure that patents released by the PTO are more likely to be upheld as valid.  The interpretation issue is typically the opposite for written description issues.  Let me explain – since the standard written description problem involves adding new particular limitations into the claims that are absent from the specification, a more narrow interpretation of the claims is actually more likely to invalidate.  (Here, I set aside the aforementioned LizardTech improper broadening issue.)  The query here is whether the PTO should be applying the reasonable interpretation most likely to invalidate rather than broadest reasonable interpretation.

= = = = =

[1] U.S. Patent No. U.S. Patent No. 6,415,082.

[2] Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)).

[3] Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998).

[4] LizardTech  v.  Earth Resource  Mapping,  Inc., 424  F.3d  1336 (Fed.  Cir.  2005).

35 thoughts on “Written Description, Disclosed Embodiments, and BRI

  1. Whenever the court cites Gentry, it almost always restates the seemingly contrary statement that this test should not be seen as an ‘essential element’ test but rather merely an inquiry as to whether the inventor possessed the invention now claimed.

    WD questions for all involved here –

    Assume that an applicant invents the bow and files the application for the bow in the appropriate point in history (i.e. with that filing date and level of skill in the art). Their specification describes and enables the bow, and contains generic language about how the bow is a machine that propels a projectile. The specification also labels the particular bow described as an “example embodiment” of the invention. Applicant files the following claims:

    Claim 1. A system comprising: a projectile-firing machine; and a projectile.

    Claim 2. The system of Claim 1, wherein the projectile-firing machine comprises wood and a member in tension, wherein the member is either string or rope.

    Claim 3. The system of Claim 2, wherein the projectile is sharpened wood.

    Claim 4. The system of Claim 3, wherein the projectile-firing machine is [particular description of a bow].

    Assume that the prosecution history explicitly disclaims any terms as being in means-plus and that the claims are construed outside of means-plus.

    The office has quite the backlog, and in 2017 the claim comes under examination. Examiner finds POST-dated art comprising a ballista (Ref A), a catapault (Ref B), and a gun (Ref C).

    Examiner makes a 112a WD rejection to Claims 1-3. As support, Examiner quotes Lizardtech stating that the full scope of the claimed invention must be possessed by the applicant. Examiner cites Ref A to claim 3, Ref B to claim 2 and Ref C to claim 1. Question 1 – Find error, citing cases, in the examiner’s rejection.

    Examiner does as above but additionally states that Claims 1-3 lack essential elements of the invention as proven by the three references. Question 2 – Find error, citing cases, in the examiner’s rejection.

    Examiner does as above but does not cite the references, and instead rejects Claims 1-3 by citing the specification and arguing that while the generic language exists in the specification, it fails to disclose non-bow means of achieving the generic scope claimed and in addition fails to show how the bow could be the only means of projectile firing. i.e. Applicant has failed to foreclose the future invention of the gun. Question 3 – Find error, citing cases, in the examiner’s rejection.

    Examiner makes the same argument and logic as with question 3, but makes a rejection under 101 abstract idea rather than 112a. Question 4 – Find error, citing cases, in the examiner’s rejection.

  2. Let me explain – since the standard written description problem involves adding new particular limitations into the claims that are absent from the specification, a more narrow interpretation of the claims is actually more likely to invalidate.

    This is logically consistent but not generally true. In other words, it is true that adding a limitation means you have to prove possession of that limitation, and therefore more tightly construing limitations means you have more features to possess, but in reality people tend to give adequate description to the important novel aspects (so novel tight limitations would be upheld) and the lesser standard for non-novel features means that often merely mentioning them is sufficient. I don’t deny that there are true new matter-style WD problems which are most likely to do be invalidated under a tight interpretation. But unless you’re going to wholesale change the invention (as here, likely to attack an already-existing infringer) there usually isn’t this style problem.

    Something that is an issue in EVERY patent is what anon calls the “ladders of abstraction” – that there is most definitely a single concrete invention which is usually disclosed under the heading “example embodiment” and claimed as a dependent claim and then the claim set gets more and more abstract as it moves toward an independent. Each abstraction requires a written description analysis, (which the PTO in fact *does not do*) where the fact finder has to determine if the example fills the expanded scope of the abstraction. Since every patent contains non-“picture” claims where there is at least some abstraction, EVERY patent raises a scope-based lizardtech-style abstraction question. Further, it raises it multiple times in multiple contexts, because it is usually multiple features being abstracted or even a single abstraction as it relates to the other steps.

    Interpreting the claims under BRI gives the office the most chances to invalidate a claim under each additional abstraction, which theoretically creates the strongest written description test. Unless you’re suggesting a dual-construction where you do BRI for Lizardtech-style abstractions and then a second pass for a tight construction for new matter, the BRI test is going to give more certainty under more WD issues.

    Again, of course, this is only relevant if the office performed WD abstraction analysis (i.e. applied Lizardtech) at all, which it doesn’t.

    1. Please excuse the potential double post due to the wayward editorial controls…

      Something that is an issue in EVERY patent is what anon calls the “ladders of abstraction”

      That’s not an issue – that’s simply what patents are.

      It is quite the misnomer to think that exacting picture-claims are the norm.

      That are not, nor should they be.

    2. Since every patent contains non-“picture” claims…

      This is a very small point about which to raise a contradiction, but I just want to note that this is not true. It is not at all uncommon to find pharma patents with a single claim (e.g., US 8,969,350) that claims the market product and nothing else.

      1. One (not minor) source of problems Greg is when people accustomed to Big Pharma claim styles try to make optional claim styles be more than mere options.

        Life (outside of Big Pharma) is simply not a picture claim type of life. Never has been. Never will be. A colossal mistake to even attempt to make it be.

        1. Sure. I do not disagree. Just because picture claims are valuable in the context of an FDA regulated industry does not mean that they are valuable in an unregulated market. Nor did I mean to imply that picture claims constitute any sort of “normal” against which we should measure other claims.

  3. Dennis, I commend you for covering a case in which Cisco was a named party, and NOT making some comment about the Patent Troll Tracker. Your recovery from that decade-old ordeal appears to finally be complete.

    In the litigation context, the CAFC today basically avoids the “essential element” or “full scope” written description problem by simply invoking the doctrine of disclaimer-by-implication (see, for example, Scimed (2001)), for example, by saying that the presence of a claimed feature was “important” to the invention, and thus, narrowly construes the claim to require it–avoiding the impermissible breadth.

    1. The plaintiff, Longview attorney Eric Albritton, tearfully told the jury he believes the Patent Troll Tracker accused him of committing a crime.

      Gesturing toward the defendants, Albritton said, “Those folks called me a criminal. People are out there saying Albritton is a criminal, out there doing bad things.”

      LOLOLOLOLOLOLOLOLOLOL

      Tough Texas man cried on the stand because he was accused of playing date-switching games with the clerk in the District Court of Banana Republic. Boo hoo! And the Oscar goes to …

      Still funny as h e ck.

  4. The query here is whether the PTO should be applying the reasonable interpretation most likely to invalidate rather than broadest reasonable interpretation.

    Are you suggesting that multiple piece-wise interpretations should be used with each seeking to deny the granting of a patent in the first place?

    In other words, was it a Freudian slip to indicate that multiple and divergent interpretations should be piecemealed together after a patent grant in order to invalidate said grant?

    While the rationale may be similar between the two, there can be no denying that the desire – as applied – speak to two very different and distinct mindsets.

    1. “anon” there can be no denying that the desire – as applied – speak to two very different and distinct mindsets.

      Don’t try to deny it, folks! Dennis is on the couch and “anon” going to perform a little p s y c h – O- analysis with emphasis on the first two syllables. Deep! And very serious.

      1. Syllables…?

        No. The difference is in words chosen, and if you had any appreciation for critical thinking, the words have very different indications.

        Maybe you want to think prior to responding….?

        1. Maybe you want to think prior to responding

          LOL

          “p s y c h – O- analysis with emphasis on the first two syllables”

          Even funnier the second time around.

          1. Repeat of your baseless ad hominem is a blight – no matter how you “feel” about it.

            Sadly, it appears beyond the editor’s ability (or perhaps desire) to do anything about that.

            Hey, it’s his “ecosystem,” so say “La Ve.”

        2. So, I guess it is settled then. For a system based on critical thing an parsing language, under Ariad, (and others) “person skilled in the art,” is the same as “persons of ordinary skill in the art.” Guess I’ll have to dumb down my client’s applications.

    2. Are you suggesting that multiple piece-wise interpretations should be used with each seeking to deny the granting of a patent in the first place?

      I don’t know about piece-wise, but there’s nothing inherently wrong with two full passes under multiple interpretations, correct? For example, if there is an ambiguous term, the office could just issue a 112b and be done with it, but I assume for compact prosecution purposes you’d have no problem with a 103 rejection over refs ABC for one meaning and another in-the-alternative 103 rejection over refs ABD for the other, in addition to the 112b.

      Why can’t the office say “under BRI there’s no WD issue but there’s a 101 issue, but under this more likely construction there is now 101 issue but a WD issue”? The applicant certainly has the ability to modify language (or even simply disclaim) to nominate which construction he wants proceed under.

      As a more practical question on the above – Whats to stop an examiner from saying “I believe the BRI to be X, which results in a 101, but as an alternate ground of rejection I construe the BRI to be Y, which results in a WD rejection.” Applicants argue what the BRI is all the time, so compact prosecution mandates an examiner consider possible alternatives and make both rejections, no?

      You know how you’re always saying you pay for a full examination and you want a full examination on the record. This is one of those times.

  5. I have been urging for ages that the US “written description” test for prosecution amendments and the EPO’s “added matter” test for prosecution amendments bear much similarity.

    As well they might. The common thread is that we can’t have Applicants getting protection wef their filing date for inventions they had not, already at their filing date, made their own ie “possessed.

    In particular, at the EPO, there are “new matter” issues when Applicant narrows the claim to an “intermediate generalisation” not found in its original as-filed disclosure. It seems that WD issues, much the same.

    1. How does your (own) view of “intermediate generalisation” intersect with the prior conversation of allowing an applicant to “disclaim” his original claim scope and claim less in regards to novelty and items that PHOSITA may have in her library, filed prior to the inventor’s submission, but within any “pending publication” timeframe?

      (and please, do not provide a (non) answer of ‘the EPO just does it’ – thanks)

      1. How does it “intersect”? It is natural for an Applicant to have to narrow during prosecution. It’s what Applicants do, in order to get to issue.

        So those drafting for Europe adopt a drafting style that you can think of as “onion layer” drafting style. A graded set of dependent claims, As many graduations of generality as the case admits, in the appln as filed, between the envelope of claim 1 and the pinpoint of the illustrated embodiment or “best mode”. Narrowing to such an “intermediate generalisation” during prosecution does not add matter.

        The qualifier “undisclosed” is key.

        Does that answer your question? If not, spell it out more clearly please.

        1. One more attempt… (and please forgive the potential double posting due to horrible filter mechanics).

          While here and now you want to proclaim “It’s what Applicants do, in order to get to issue.” and you finally add ““onion layer” drafting style. A graded set of dependent claims, ” which I had indicated that you had omitted in recent dialogue, you still appear to be fixated with an odd notion of ““intermediate generalisation”.

          My prior (lost) post went into some detail about PHOSITA and objectivity and libraries and several of the points that you have (still) not provided answers to from the previous dialogue, but it will have to suffice that your post here appears to continue to conflate things and lacks any real explanation of “but that’s how the EPO does it.”

          I had included a repeat of a previous comment to you that in US drafting style, the “onion layer” approach is NOT ONLY something that is done with good claims, but is also easily handled with what is by now, simple (yes, the term fits) boilerplate in the specification. Again, as a reminder, we too have the “no new matter” rule, and here one can never really guess in which direction and what art the examiners will come up with after the point of which the applicant cannot add new matter.

          In addition to that, here in the States, we have Patent Profanity to deal with that has driven away most any inclusion and or comparisons with anyone else’s inventions and or the current “state of the art.” This perfectly natural reaction to an (increasingly hostile) court view of patents is just a reality that US drafting is faced with, and is really not a question of “style.”

          This has created the “style” (more like general necessity) of including in the specification itself language that allows the applicant to “generalise” throughout the entire range of intermediates, and makes your preoccupation with the concept of “intermediate generalisation” a bit odd and unconnected to the larger issues.

          Further, your comment about “best mode” seems a bit askew.

          First, best mode is not something that “must be in the claims,” but rather is a specification requirement.

          Second, best mode must merely be present and need not even be identified AS “best”, and there are plenty of reality-inducing drivers to simply NOT label something as “best mode” including, but not limited to, our old friend Patent Profanity.

          Third, there really is no “rule” that Best Mode is synonymous with the narrowest and most pinpoint of a claim (and I am taking your insertion of “intermediate generalisation” to indicate the pinpoint that you are talking about is in your onionized claims). Quite in fact, best mode that is locked down to the finest deepest detail at which one “would settle” most often will NOT be “best” for the client at all.

          Then you throw in the comment of “ The qualifier “undisclosed” is key.” which appears to circle back to the PHOSITA/objective/library dialogue with which you never did provide answers (so your question of “Does that answer your question?” brings about an obvious reply of “No, you still have not answered questions – on the dialogue in the previous thread.”

          You have supplemented your reply with an amount of clarity by adding the “onion layer” claim drafting view. But you have also added some level of confusion at the same time, so your “progress” is at best mixed, but certainly, not at any type of “providing answers as has been asked of you.

          1. Boilerplate is not enough to constitute a layer of the RoW FtF onion.

            RoW-style FtF drafting involves stating what difference each successive narrowing of the claim makes to the nature and magnitude of a technical effect delivered by the claimed technical feature combination. It is my experience that drafters in the USA are reluctant to include (in the application as filed, back at the earliest declared priority filing date) such graduated statements of increasing technical effect with successive narrowings of scope.

            1. You say not enough even as you get the concept wrong (application versus claim placement).

              You will pardon me if I do not find your bald statement compelling.

              Perhaps you don’t understand what an effective boilerplate does, or perhaps you cling to a notion that is just not worthy to cling to.

              As to claim differentiation, you remain askew. Not that bad claim writing with meaningless treatment of dependent claims is absent, as it surely is not absent; it is just that the presence of such bad claim writing does not excuse your own lack of understanding of how onionizing can be accompished, or the mess that you have left unanswered on the whole PHOSITA and allowing applicants to change what they consider to be their invention because of the library including (for the legal Person) includes filings not yet published.

      2. Whenever the court cites Gentry, it almost always restates the seemingly contrary statement that this test should not be seen as an ‘essential element’ test but rather merely an inquiry as to whether the inventor possessed the invention now claimed.

        WD questions for all involved here –

        Assume that an applicant invents the bow and files the application for the bow in the appropriate point in history (i.e. with that filing date and level of skill in the art). Their specification describes and enables the bow, and contains generic language about how the bow is a machine that propels a projectile. The specification also labels the particular bow described as an “example embodiment” of the invention. Applicant files the following claims:

        Claim 1. A system comprising: a projectile-firing machine; and a projectile.

        Claim 2. The system of Claim 1, wherein the projectile-firing machine comprises wood and a member in tension, wherein the member is either string or rope.

        Claim 3. The system of Claim 2, wherein the projectile is sharpened wood.

        Claim 4. The system of Claim 3, wherein the projectile-firing machine is [particular description of a bow].

        Assume that the prosecution history explicitly disclaims any terms as being in means-plus and that the claims are construed outside of means-plus.

        The office has quite the backlog, and in 2017 the claim comes under examination. Examiner finds POST-dated art comprising a ballista (Ref A), a catapault (Ref B), and a gun (Ref C).

        Examiner makes a 112a WD rejection to Claims 1-3. As support, Examiner quotes Lizardtech stating that the full scope of the claimed invention must be possessed by the applicant. Examiner cites Ref A to claim 3, Ref B to claim 2 and Ref C to claim 1. Question 1 – Find error, citing cases, in the examiner’s rejection.

        Examiner does as above but additionally states that Claims 1-3 lack essential elements of the invention as proven by the three references. Question 2 – Find error, citing cases, in the examiner’s rejection.

        Examiner does as above but does not cite the references, and instead rejects Claims 1-3 by citing the specification and arguing that while the generic language exists in the specification, it fails to disclose non-bow means of achieving the generic scope claimed and in addition fails to show how the bow could be the only means of projectile firing. i.e. Applicant has failed to foreclose the future invention of the gun. Question 3 – Find error, citing cases, in the examiner’s rejection.

        Examiner makes the same argument and logic as with question 3, but makes a rejection under 101 abstract idea rather than 112a. Question 4 – Find error, citing cases, in the examiner’s rejection.

  6. A separate issue here involves the logical problem with applying the written description and enablement requirements to the “full scope” of the claims. This problem arises from the commonly used “comprising” language to leave the invention scope open-ended.

    1. … as well as any Big Pharma item that would include within their “full scope” the (possessed at time of filing) ability to have the actual utility as would be evidenced by passing the FDA gauntlet…

      1. Please keep pressing on “actual utility” possessed at the time of filing! Press with all your might!

        Because we know that the code disclosed in the typical junky logic application is bug free and works just awesomely on all the latest operating systems.

        So keep pressing this! You’re a very serious person and a really deep thinker.

        LOLOLOLOL

        1. Maybe you want to try to make an actual point, Malcolm?

          You ran away after making a similar drive by ad hominem last time.

          “Go figure Folks”

          1. Once again, please excuse any eventual double post due to the moderation trap…

            …and why do you think code (bug-free or otherwise) is required to show possession?

          2. Maybe you want to try to make an actual point

            Your ability to project your failings onto others is legendary.

            Please keep the laughs coming, O Serious One!

            Tell use more about possession and “actual utility” at the time of filing. You’re a very serious person! I’m sure you’ve thought very, very deeply about this. Right.

  7. Dennis, with respect to your second-from-last section regarding the so-called “essential element” test and its distinction from 112’s “possession” test, it’s difficult to understand why you think these are “seemingly contrary” when you don’t provide us with your understanding of the definitions of those legal terms. Note that this is not to imply any laziness on your part! At the moment I’m not sufficiently caffeinated to articulate my own understanding of the meanings. But I do think that the “essential element” issues tend to arise when the claims fail to recite a limitation that is ubiquitous in the spec’s description of the invention, whereas “possession” issues tend to arise when the claims recite a limitation that is absent from the description in the specification.

    1. I think that the legal question in Gentry Gallery and the “essential element” questions are essentially the same, and I believe that the Federal Circuit’s distinguishing of the doctrines are intended to avoid procedural problems with ‘essential element’ – such as conducting a search for essential elements in the specification and identifying which ones must be found in the claims. Rather, the Federal Circuit says that in this situation we just follow the ordinary principles and ask: did the applicant show possession of the full scope of the invention?

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