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 Gallery, LizardTech 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.
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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.