Layers of Doctrine with a Faulty Claim Construction at the Core

by Dennis Crouch

D Three Enterprises v. SunModo Corp. (Fed. Cir. 2018)

Reading this decision feels akin to slowly peeling off the layers of an onion – hoping to reach some prize at the core but only reaching a rotten core.

D-Three’s patents in suit are directed to roof-mount sealing assemblies for solar panel installation.  U.S. Patent Nos. 8,689,517; 9,068,339; and 8,707,655.   The district court found the asserted claims invalid as obvious or anticipated.  The basic central dispute, however, was whether the claims could rely upon a 2009 provisional application filing date.  Although the formalities of the priority chain was met — the district court found a substantive problem. In particular, the court ruled that the 2009 provisional did not sufficiently disclose the inventions as claimed — i.e., failure of written description.  Going one layer deeper, it seems that the real dispute is about claim construction — do the claimed assemblies require a “washerless” approach?  The courts found that the claims recite a washerless assembly but that the limitation was not disclosed by the provisional application — so no priority.

Unrecited Recitation: In the appeal, the Federal Circuit’s analysis began with its conclusion on the claims: “All Asserted Claims except [except two] recite washerless assemblies.” The problem with the statement is that the claims don’t expressly recite a washerless assembly.  In its brief, D Three characterized the claims as “not includ[ing] a limitation that would require the presence of a washer. No claim in the Patents-in-Suit states that there cannot be a washer, i.e., no claim requires an assembly be washerless.”  (See claim 1 below).

Unfortunately, the Federal Circuit goes no further in explaining its conclusion that the claims recite washerless assemblies but rather jumped into consideration of whether the priority claim provides a sufficient disclosure.

35 U.S.C. § 120 provides for the right-of-priority from prior U.S. applications.  Under the statute, the priority claim only works if the earlier-filed application sufficiently disclosed the invention being claimed in the later-filed application.  In particular, the statute requires disclosure “in the manner provided by section 112(a).”  In other words, the earlier-filed application’s disclosure must satisfy the enablement and written description requirements to support the claims of the later-filed application. Here, the focus was on written description — the requirement that the disclosure clearly allows a PHOSITA “to recognize that the inventor invented what is claimed” and that the “inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc).

Here, the provisional application does actually disclose a washerless assembly, but only one.  However, the appellate court affirmed that that one specific example (using W-shaped prongs) was not sufficient to provide written description support for the claims that were not limited to W-shaped prongs.  According to the court, the result is that we can only “speculate as to the modifications that the inventor might have envisioned, but failed to disclose.” Quoting Lockwood v. Am. Airlines, Inc., 107 F.3d
1565 (Fed. Cir. 1997). At base, this case looks a lot like Gentry GalleryLizardTech and ICU Medical, although none of these cases were cited.

In the end, we have a failure of written description; failed priority claim; and invalid patents.

= = = = =

Notes:

Claim 1 of the ‘517 patent:

1. A roof standoff device for use in mounting an object to a roof, said standoff device comprising:

a base bracket having at least one mounting hole for receiving an attachment element for attaching the base bracket to a roof surface, said base bracket further including a first threaded attachment element;

a flashing having:

a raised section with an upper surface and an aperture extending through said raised section, wherein said aperture is configured for alignment with said first threaded attachment element of said base bracket;

a flange extending beyond a base of said raised section, wherein, when disposed over said base bracket on the roof surface, an inside surface of said raised section receives and surrounds said base bracket and said flange rests on the roof surface;

a core body having a first end and a second end, said second end having a contact surface;

a second threaded attachment element associated with said second end of said core body, said second threaded attachment element configured to threadably engage said first threaded attachment element, wherein, upon said first and second threaded attachment elements being threadably engaged, said flashing is compressed between said base bracket and said second end of said core body; and

said core body having a third attachment element disposed proximate to said first end for attaching an object to said core body.

7 thoughts on “Layers of Doctrine with a Faulty Claim Construction at the Core

  1. 4

    I wonder why this opinion was precedential, as only the parties likely can make any sense of it. The “W shaped prongs” in bracket 1700 are simply what allows the attachment to support post 100. The provisional application clearly shows these W shaped prongs are an alternative to the bolts 412 shown in the other (washer) embodiments to attach support post 100. There is nothing in the provisional application describing the W shaped prongs as some inventive feature that allows you to avoid using washers.

    The second part of the opinion holds that ‘339 claim 4 is invalid because it recites that the washer “surrounds said aperture . . .” but the washer could be either above or below the flashing, whereas the provisional application only shows the washer above the flashing. That holding seems directly contrary to Cooper Cameron v. Kvaerner, 291 F.3d 1317 (CAFC 2002). In that case, the specific location of the workover port described in the specification (i.e., “between the plugs”) did not render invalid under 112 claims covering locations that were not “between the plugs” because the drawings showed the workover port was located as recited in the claims, even if that location was not “between the plugs”: “An inventor is entitled to claim his invention in more than one way.”

    1. 4.1

      In Cooper Cameron, a figure expressly disclosed the location claimed whereas D Three failed to disclose in text or figures any alternative location for a washer.

      1. 4.1.1

        I guess my comment was not clear. The drawings in the Cooper Cameron patent, consistent with the specification, only showed a workover port located “between the plugs.” There was no alternative location. However, the drawings showed that when the workover port was “between the plugs,” it was also above the tubing hanger and below the BOP bore. As a result, by claiming the workover port location as being above the tubing hanger and below the BOP bore, Cooper Cameron was able to encompass workover port locations that were not “between the plugs.”

        Here, D-Three’s drawings all show washers that are only above the flashing, similar to Cooper Cameron’s workover port that was shown only “between the plugs.” However, D-Three’s drawings also show that the washer is located so that it “surrounds the aperture” in the flashing. Under Cooper Cameron, that would be enough 112 support for claim 4, even if the claim covers washers that are below the flashing.

        Cooper Cameron was not required to claim its workover port location in terms of whether it was “between the plugs,” but was permitted to claim the workover port as more broadly located above the tubing hanger and below the BOP bore (as shown in the drawings), regardless of whether it was “between the plugs.” Under that case, D-Three should have been permitted to claim the washer location using the alternative language supported by the drawings, i.e., “surrounding the aperture,” whether or not a washer covered by those broader claims is above the flashing.

        See Cooper Cameron, slip op. at 11-12: “We are also not persuaded by Kvaerner’s arguments that the claims are invalid for inadequate description because the specification does not indicate that the workover port may be claimed by reference to the position of the tubing hanger and BOP bore. The drawing does disclose a workover port above the tubing hanger. The fact that the same drawing also shows it between the plugs does not vitiate its disclosure above the tubing hanger. Both descriptions are supported by the same drawing.”

  2. 3

    This is why they teach you “claim all essential components” in claim drafting 101. By not claiming a washer, they were saying the washer was not essential– i.e., claiming an assembly that was washerless. But they did not contemplate an assembly that was washerless when they filed, unless it had a W-shaped bracket, but that was not in the claim (they could have argued to construe the term ‘bracket’ to mean w-shaped bracket, but probably chose not to for infringement purposes.

    I’m not totally convinced, but I don’t think it’s ‘rotten.’ I wonder if they could have gotten there by invoking 112(6) on some of the claim elements (“an attachment element for attaching an object”), which would have limited them to their w-shaped bracket and precluded a finding of infringement.

  3. 2

    REYNA, CLEVENGER, and WALLACH

  4. 1

    Here, the provisional application does actually disclose a washerless assembly, but only one. However, the appellate court affirmed that that one specific example (using W-shaped prongs) was not sufficient to provide written description support for the claims that were not limited to W-shaped prongs. According to the court, the result is that we can only “speculate as to the modifications that the inventor might have envisioned, but failed to disclose.” Quoting Lockwood v. Am. Airlines, Inc., 107 F.3d
    1565 (Fed. Cir. 1997).

    Oh man, computer software applicants better hope the office never stops punishing examiners who actually apply written description against them.

    1. 1.1

      Also – in before someone tries to distinguish the highly predictable art of computer programming from what I am sure is the entirely chaotic and unpredictable art of roofing.

Leave a Reply

Your email address will not be published. Required fields are marked *

 Notify me of followup comments via e-mail.

You can click here to Subscribe without commenting

Add a picture