by Dennis Crouch
35 U.S.C. 112(a) requires that a patent specification include 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.” That statutory language serves as the basis for the written description requirement — whose purpose is to ensure that “the inventor actually invented the invention claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc). Claims that were not sufficiently described in the originally filed specification will be deemed invalid or, if a priority filing is involved, the patentee will be barred from relying upon that document for its filing date.
Most often, the written description requirement arises in situations where the patent applicant substantially modified its patent claims during prosecution in a way that creates some distance between the original disclosure and the new claims. Commonly, the application will include a set of specific disclosures and the patentee will attempt to later amend its claims to cover a broad genus. (Recognize that in Ariad, the Federal Circuit explained that there can be a failure of written description with never-amended claims.)
In Hologic v. Smith & Nephew (Fed. Cir. March 14, 2018), patentee (Smith & Nephew) claimed the use of a light-guided endoscope for uteral surgery. The original specification of the parent application did not include the “light guide” language, but did explain that the endoscope included “a fibre optics bundle which provide for lighting at the end of [the] lens.” During prosecution, the examiner objected to the use of “light guide” in the claims since that term was never discussed in the specification — in response, the patentee amended the specification to state that the aforementioned firbre optics bundle is an example of a light guide: “a light guide such as, a fibre optics bundle which provide for lighting at the end of [the] lens.” (underlined language added to specification during prosecution). The disclosure also included drawings showing the connection between the lens and the light source.
The specification amendment satisfied the original examiner and U.S. Patent No. 8,061,359 was duly issued to Smith & Nephew. However, on inter partes reexamination, the new examiner raised the problem again – concluding that the disclosed single example of “fibre optics bundle” language did not satisfy the broad genus of “light guides.” The PTAB (Board) sided with the patentee. Although the Board identified the case as a “close call,” it ultimately held that the disclosure was sufficient to satisfy the written description requirement. On appeal here, the Federal Circuit has affirmed.
The written description inquiry begins with the “four corners” of the original patent specification as read from the perspective of a person of ordinary skill in the art. To satisfy test, the specification must describe the invention in a way understandable to that PHOSITA and that shows possession of the invention now being claimed. This is an objective inquiry and the court applies a reasonableness test — does the specification reasonably convey possession of the invention? Here, the question is whether the disclosure of fibre-optics reasonably conveyed the claimed “light guide.” As part of the analysis of the test, the court also considers the level of predictability — finding that this field (at least as far as equipment construction) is predictable. That conclusion means that “a lower level of detail is required to satisfy the written description requirement than for unpredictable arts.”
On appeal, it is also important to recognize that satisfaction of the written description requirement is deemed a question of fact. As such, Board conclusions are given substantial deference on appeal.
In walking through its analysis the Federal Circuit appeared to fully base its decision on two agreed-upon facts:
- Everyone agrees that the patent discloses one light guide – the fibre optic bundle: “Board properly relied on the fact that the parties do not dispute that a
“fibre optic bundle” is a type of light guide.”
- Everyone agrees that various types of light guides are well-known in the art: “Nor did the parties dispute that various types of light guides were well-known
in the art.”
Based upon these two facts (and presumably the predictability of the art), the Federal Circuit found that the validity conclusion appropriate:
Accordingly, we conclude that substantial evidence supports the Board’s finding that Emanuel PCT reasonably conveys to a person of ordinary skill that the inventor had possession of a “light guide.”
The bottom line is suggested by the article title: For Predictable Arts, the written description requirement to a claim for a genus is satisfied by disclosure of a single species of that genus along with the (later proven) fact that other members of the genus are also well known in the art.
Note here that the challenger also argued that the written description did not show the light guide being “permanently affixed” in the “first channel.” On appeal, the court also rejected those arguments.
Decision here authored by Judge Stoll and joined by Judges Newman and Wallach.