A Written Description of the Invention (including how it is made?)

by Dennis Crouch

CenTrak v. Sonitor Tech (Fed. Cir. 2019) is a quirky case that basically stands for the (wrongheaded) proposition that the Written Description Requirement does not usually require a description of how to make the invention actually work. Here, largely the court relied on the broad language of Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180, 1191 (Fed. Cir. 2014) (“written description is about whether the skilled reader of the patent disclosure can recognize that what was claimed corresponds to what was described; it is not about whether the patentee has proven to the skilled reader that the invention works, or how to make it work, which is an enablement issue.”).  

The district court dismissed this infringement lawsuit on summary judgment — finding the asserted claims invalid for lack of written description or not infringed (or both).  On appeal the Federal Circuit reversed that determination — finding both issues ripe with “genuine disputes of material fact.”

The patent at issue here claims the use of ultrasound signals to track location of a mobile device (typically a patient in a hospital).  U.S. Patent 8,604,909.  There are several reasons why ultrasound can be a better option than WIFI or infrared (IR) signals for location detection within a small area.  For example, the steeper proximity decay makes it much less likely that a distant base-station would pick-up the signal. Thus, location can be discovered and without needing triangulation or highly precise equipment.  Both the patentee and accused infringer deal in ultrasonic location equipment.

All the claims are directed to the ultrasound approach.  However, it does not appear that the inventor initially cared much about the ultrasound approach. Rather, the original provisional application does not mention ultrasound at all [60881269].  While the subsequent priority non-provisional application also focuses primarily on the use of IR and RF signals, it does does include two-sentences disclosing ultrasound signalling:

Although IR base stations 106 are described, it is contemplated that the base stations 106 may also be configured to transmit a corresponding BS-ID by an ultrasonic signal, such that base stations 106 may represent ultrasonic base stations. Accordingly, portable devices 108 may be configured to include an ultrasonic receiver to receive the BS-ID from an ultrasonic base station.

The original priority filing also included one claim directed to ultrasonic detection.  That claim was the subject of a restriction requirement and withdrawn.  The patent at issue is the resulting divisional application filed with a set of 25 claims all directed to ultrasonic detection.

At trial, the inventor admitted that the invention did not describe an ultrasonic portable device:

Q. But there’s no ultrasonic portable device that is actually described in the ’909 patent; right?

A. This is correct, yeah.

But, the inventor indicated (supported by expert testimony) that a person of skill in the art would have little trouble adapting the disclosure to build the ultrasound system.

[To make the invention]  You have to understand how to drive an ultrasonic transmitter, how to receive an ultrasonic signal, and how to process them. But this is known art to people who are knowing ultrasound.

In its invalidity decision, the district court focused on the testimony of no example device and concluded that the mere mention of ultrasonic techniques was not sufficient to satisfy the written description requirement.  The court explained, for instance, that the claims include timing synchronization elements that were explained for IR, but that timing could be quite different for ultrasound of speed (speed of light vs speed of sound) and reflection differences.

= = =

The written description requirement is a test of for sufficiency of disclosure — The disclosure must “reasonably convey . . . that the inventor had possession of the claimed subject matter as of the filing date.” Ariad.  The basic question is whether the specification as originally filed provides evidence that that the inventor actually invented what is being claimed.

In looking at the evidence on appeal, the Federal Circuit found a “genuine issues of material fact” as to whether “disclosure of the implementation details” is necessary to satisfy the written description requirement.  According to the court, written description does not demand examples, or actual reduction to practice. Rather, the law only requires “identif[ication] of the claimed invention . . . in a definite way” quoting Ariad.

Here, the court concluded, “the specification at least mentions base stations and receivers that use ultrasound,” and in many cases such a mention is sufficient to satisfy WD.  One question that arises from Ariad is the level of detail required. In that case, the court explained that “the level of detail required to satisfy the written description requirement varies depending on the nature and  cope of the claims and on the complexity and predictability of the relevant technology.”  Here, the court concluded that the level of complexity and predictability is a factual issue in dispute and thus that it should go to trial rather than be decided on summary judgment.

In this process, the court noted that on remand, the district court should also consider the separate doctrine enablement that may bear more teeth in this type of situation.

On infringement, the district court also dismissed the case for lack of infringement. The claims require use of wireless computer network, including a backbone, Wi-Fi access points, and server hardware. The accused infringer does not supply this material but instead piggy-backs its systems as an add-on to the already existent network.  The district court found that no single entity had “made” the system and so Sonitor could not be liable as a direct infringer.

On appeal, the Federal Circuit rejected that analysis — finding material evidence that Sonitor was the “final assembler” of the system and thus could be held liable for “making” the invention.   I’ll note here that the hospitals themselves could be held liable, but the patentee would rather extract rents from its direct competitor rather than its potential clients.

 

46 thoughts on “A Written Description of the Invention (including how it is made?)

  1. 8

    While I don’t get the logic of it, written description is a question of fact and enablement is a question of law (with underlying questions of fact). So it is reasonable that the conclusion of claim invalidity for lack of written description was improper on summary judgment. And it is also reasonable that the claims can be more easily found invalid for lack of enablement on summary judgment. I think the outcome of the appeal is more easily understood from the written description being treated as a question of fact than from an analysis of whether the written description requirement was met.

  2. 7

    Dennis —

    I challenge you on this one — “the (wrongheaded) proposition that the Written Description Requirement does not usually require a description of how to make the invention actually work”

    “How to use” is tested under the enablement requirement, not the written description requirement.

    The two requirements are very different — for example, “written description” is tested within the four corners fo the spec/drawings, while “enablement” may look to the ordinary knowledge in the art.

    1. 7.1

      Thanks Dave.

  3. 6

    DC> but the patentee would rather extract rents from its direct competitor rather than its potential clients.

    That is a pretty anti-patent statement. “Extract rents”?

    This case was decided correctly. For once –Taranto has tried his best to remove a person skilled in the art in the analysis of enablement for algorithms and for reissues–they got it right. Probably because Chen was on the panel.

    The issue is that how would a person skilled in the art see this. Would they recognize “that what was claimed corresponds to what was described”? I think in this case they would. In wireless technology, the interchange of different types of signals to accomplish a function is common. Those couple of sentences are enough for one skilled in the art.

    Again–the issue here is whether a layman–the judge–or a person skilled in the art should be used to determine whether a patent claim satisfies the written description requirement and the enablement requirement. I think a person skilled in the art would say yes I see this is a common substitution that we might make and here it is described that this substitution may be made.

    My guess is that this satisfies enablement as well. Again-the substitution of different type of waves to use to accomplish functions in wireless devices is very common.

    1. 6.1

      “Extract rents”?

      Yes, extract rents. This is not a slur or a vituperation. It is just an honest characterization of what the monopoly afforded by the patent allows the patentee to do. This is what patents do, and there is nothing shameful about it.

      1. 6.1.1

        It’s an anti-landlord slur.

      2. 6.1.2

        Collect a reasonable royalty. Having to sue because the D refused to pay a reasonable royalty. Protect their intellectual property by requesting the court grant a reasonable royalty because post eBay it is almost impossible to enforce the patent right of exclusive. Etc.

      3. 6.1.3

        Sorry Greg, but you are very wrong.

        “Rents” especially as used in this context, carries a definite negative connotation.

        1. 6.1.3.1

          I agree anon. “Rents” is used by Lemley and the others to connote unfair and anti-competitive practices.

          It is an interesting question to ask if the standard for WD should be the same for enablement. Can you have a WD and not an enablement? I do not think it really makes sense. Because the WD should be recognizing the full invention and if it is not enabled then how would the person skilled in the art know what the invention was.

          1. 6.1.3.1.1

            Can you have a WD and not an enablement?

            Definitely. I can easily give an example.

            “Claim 1. An immunogenic peptide having an amino acid sequence at least 80% identical to SEQ ID NO:1.”

            It would be small effort to feed SEQ ID NO:1 (~230 residues long) into a compute algorithm that would spit out every conceivable 230 residue possibility that is at least 80% identical to SEQ ID NO:1. Therefore, it is a trivial effort to identify whether a given peptide is or is not described by the application.

            It would, however, require quite a bit of experimentation (well more than could pass the “undue experimentation” test) to determine which peptides in that set—more than a million with >80% identity to SEQ ID NO:1—would function for the disclosed utility of the application.

            This claim, in other words, does pass the WD test, but does not pass the enablement test.

            1. 6.1.3.1.1.1

              Thanks Greg. But I guess my point is that since the person skilled in the art knows what you said about the need for “quite a bit of experimentation” could one say that there is not a WD of the invention in the specification? Do you see what I mean? The person skilled in the art could say I saw speculation about it, but no concrete invention that matches the claims–just speculative talk. The question is whether the enablement is necessarily part of the WD. I think it is. It may not make a difference, though, as if it is not enabled then the claims are invalid anyway.

              I think the WD protects against the opposite problem of claims that are enabled but there is no WD in the specification. But the invention is enabled based on the claims and the specification.

              1. 6.1.3.1.1.1.1

                Re NW’s: “I think the WD protects against the opposite problem of claims that are enabled but there is no WD in the specification. But the invention is enabled based on the claims and the specification.”
                NW, my recollection is that that was true of most of the older “written description” decisions in interference decisions, in which one party had a minor spec enablement but had no original claims to that enablement or any other spec indication that that embodiment was what the inventor was indicating to be the invention, and then the applicant tried to add different claims later for that embodiment to start an interference.
                [Of course if an application as filed has claims to an invention they are part of the original spec and the spec may be amended to add that original claim language.]

            2. 6.1.3.1.1.2

              Greg you are describing what a biology, chemistry major, or pharmaceutical person would understand. WHAT ARE YOU TALKING ABOUT? Not every patent as written is understood by all.

            3. 6.1.3.1.1.3

              “Claim 1. An immunogenic peptide having an amino acid sequence at least 80% identical to SEQ ID NO:1.”

              Is that really sufficient for WD in this field? That statement alone provides no indication that the applicant actually knows which of the millions of possibilities have the immunogenic effect.

              Not disagreeing. Jjst curious about something outside my area.

              1. 6.1.3.1.1.3.1

                Actually, you are right. I should have said “A peptide having at least 80% sequence identity to SEQ ID NO:1.” As soon as you add “immunogenic” you create a WD problem for yourself. If you limit yourself to “a peptide,” however, then there is no WD problem (although there is still an enablement problem).

                1. English law has long recognised a distinction between what is “disclosed” and what is “enabled”. Here a Link:

                  link to bailii.org

                  Analogously, WD requires that the claimed subject matter be not only enabled but also disclosed, in the patent application, on the priority date. Both are necessary.

                  So quite why this decision is “wrong headed” escapes me.

                2. Was just about to type the same thing.

                  Will also add that without more there is a utility problem. It won’t suffice for 101 utility purposes that the peptide’s sole known use is as a source of amino acids (in food) or a molecular weight marker additive (for example).

                  At the same time, the peptide claim Greg wrote should suffice to anticipate a later claim of the same scope, regardless of whether it is later shown that the peptide is immunogenic or not. (In re Papesch)

                  It’s not easy to get a broad peptide claim like that granted these days unless it’s a fairly long peptide and you have a lot of data.

                3. Assuming this was an original generic claim, OR there was a comparable generic description of the invention elsewhere in the spec indicating that this was what the inventor considered to be invented, there should logically not seem to be a WD issue.
                  But as you noted, there may be an insufficient number or sufficiency of spec examples to validly support a broad generic claim, a different 112 issue.

                4. indicating that this was what the inventor considered to be invented

                  …reminds me of the simple caveat language point that had been made of note in discussions past (and to which, Paul never seems to be able to grasp).

                  Are we heading there yet again?

          2. 6.1.3.1.2

            Can you have a WD and not an enablement?

            Meh, the more interesting question is whether you can have enablement and not WD.

            While (perhaps) different (and different along different aspects), does having the “more difficult” one subsume the other, and if so, and as both are (independently?) needed, would it suffice to simply show the satisfaction of enablement?

            1. 6.1.3.1.2.1

              “Meh, the more interesting question is whether you can have enablement and not WD.”

              Absolutely possible. For example, a claimed feature could be shown in the drawings but not described in the specification outside of in a claim.

              Consider the case where three elements are shown in a circuit in an electrical schematic in the drawings in which element 2 is shown in the drawings as being located between elements 1 and 3, but the description never states that element 2 is located between elements 1 and 3 in the circuit.

              Claim 2 of the claims includes the claimed feature that element 2 is located between elements 1 and 3 in the circuit of the device of Claim 2.

              Claim 2 could potentially be enabled, because the circuit claimed is shown in the drawings and a person of ordinary skill in the art could build the device of claim 2 based on the electrical schematic shown in the drawings, but there is no “written description” of this claimed feature.

              1. 6.1.3.1.2.1.1

                Your reliance on “drawing” as somehow “not counting” is something itself that does not count.

                The adage “a picture is worth a thousand words” is most definitely true when it comes to patent pictures.

                Your reply does not cut it.

                1. How does a drawing with no text on it by itself help to show that the specification complies with the Written Description Requirement”?

                  The fact that a drawing may “show” a claimed feature does not mean that there is a “written description of the claimed feature.” Of course, during prosecution, a drawing can be the basis for adding text to the specification to describe what is shown in the drawing and provide written description for the claimed feature to comply with the Written Description Requirement. The claim itself can also be the basis for adding text to the specification to comply with the Written Description Requirement.

          3. 6.1.3.1.3

            Looking back on this, the negative connotation extends beyond the mere “rents” aspect and reaches to the emphasized distinction as to from whom those “rents” may be chosen to be “extracted” from.

            While taking a (Pollyanna) view that of course, a patent holder has a full and legitimate ability to decide against whom one may choose — and may choose NOT — to enforce against, to what purpose is a distinction between “competitor” and “client” noted for?

            To wit, the use of “but the patentee would rather extract rents from its direct competitor rather than its potential clients.” is NOT explicated, but rather left on its own with NO (apparent) point being made WITH that distinction.

            This is nothing more than feeding a subtle bias AGAINST patent holders. The distinction drawn – with no discussion or reason why the distinction is made – is left as somehow being an illicit or unseemly act, reminiscent of other “views” that somehow infringement is (or should be) an “Efficient Infringement” thing and that small “mom and pop” places (or other “friendly” entities) somehow should be automatically ‘excused’ from even being considered “Infringers.”

            Why bring up the distinction in a last sentence and leave it hanging so?

            Director Iancu was right about one thing: the dialogue on patents needs to be changed from the (underlying) one of negativity and refocused on the fact that patents (and a patent system) are a good thing.

        2. 6.1.3.2

          “Rents” especially as used in this context, carries a definite negative connotation.

          If it carries a “negative connotation” for you and your cohorts … so what?

          Are you going to get on your silly soapbox and lecture Dennis about “the perception of bias” again like the hypocritical little snowflake baby that you are? Go fill up your echo chamber with a river of tears, you miserable g 00fb@ll.

          1. 6.1.3.2.1

            Your cognitive dissonance is showing again Malcolm by your ASSUMING that the negative connotation is somehow only for your attempted one-bucketing of “cohorts.”

            Much like below wherein you err by presupposing the comment to apply perhaps to only a certain form of innovation, here too, the connotation is a global one, and pertains to ALL forms of innovation.

            There is NOTHING here about “perception” and everything here about simply recognizing a well-known connotation.

            That you somehow want to turn this into a personal attack is only you being you.

            As to Greg below, he belies his Pollyannaism with the bare reference to the fact that the term is an economics term. As noted, other terms (even economic terms) are known and can be used, especially in the contexts of property rights (be those rights deemed merely Public Franchise property rights, or the more correct Private personal property rights).

      4. 6.1.4

        In economics, economic rent is any payment to an owner or factor of production in excess of the costs needed to bring that factor into production.

        Gilead sells each unit of Truvada for much less than the marginal cost of production—the extraction of “rent,” as per the economic definition. The reason that it can do that—without competitors entering the market and forcing down the per-unit price—is that Gilead has a patent that prevents such market entry by competitors. That is the whole point of the patent.

        If you object to the word “rent,” you really need to take it up with the community of economists. We could use the word “pidgesokin” instead, but right now the word in common commerce among educated English speakers is “rent.” If you try to invent your own private argot to avoid “rent,” you are mostly going to find that nobody understands what you are saying.*

        * Come to think of it, is mostly how I feel when I try to read your posts, so maybe you are farther down this road than I had quite appreciated.

        1. 6.1.4.1

          “Gilead sells each unit of Truvada for much less than the marginal cost of production…”

          Er, “Gilead sells each unit of Truvada for much more than the marginal cost of production…” Hopefully anyone who cares knew what I meant, even though it was the opposite of what I said.

    2. 6.2

      Sorry, some folks use “extract rents” in a derogatory way. It was not intended here. Patents do allow those owners to “extract rents,” but the design of the system is such that those potential rents are designed to serve as the incentive to innovate.

      1. 6.2.1

        [T]he design of the system is such that those potential rents are designed to serve as the incentive to innovate.

        Right. I am sure that some people use “extract rents” in a derogatory manner, because some people think that profit is immoral. I have some derogatory terms that I would use to designate those people. I am not convinced, however, that we should stop using clear terminology to describe reality just because of a bunch of perpetual sophomores say the words “extract rents” with a sneer in their voices.

        Patents are desirable because they make it possible to extract rents. That is what they do. Anyone who feels uncomfortable admitting as much just needs to buck up and stop apologizing for success.

  4. 5

    DC: There are several reasons why ultrasound can be a better option than WIFI or infrared (IR) signals for location detection within a small area.

    All of which were known in the art.

    The patent at issue here claims the use of ultrasound signals to track location of a mobile device (typically a patient in a hospital).

    Because hospital patients are totally different from other kinds of trackable objects. Bazurok, the God of Infrared Signals, is notoriously afraid of hospitals and will often suspend the invocation of his powers there unless expensive offerings are made.

  5. 4

    Once again we see the CAFC bending over backwards to protect the least skilled and the least innovative people who ever filed an application with the USPTO.

  6. 3

    Quiry the “wrongheaded” Fed. Cir. written description comment.
    AIA 112
    “(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 his invention. [emphasis provided.]
    (b) Conclusion- The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”

    1. 3.1

      These are reversals of summary judgments – remands for trials of disputed facts – primarily re the infringement question, re the motion-asserted facts, not actual decisions based on actual fact-findings.
      Also 103 has not even been considered yet, even though there is considerable patent prior art on various ways of tracking/locating the positions of movable objects or people within buildings that could have been raised in an IPR.
      What I find “quirky” about this case is the absence of mention that this patent could not have a valid priority claim to its provisional application. Because what is being claimed here is new matter that was only added later in the filing of the formal parent application to support these divisional claims and to broaden generic claim scope in the parent. [A not unusual tactic, which is too often not noted by examiners in prosecution.] The proper effective filing date will impact the scope of available prior art in this remand.

      1. 3.1.1

        What you say is absolutely true Paul, but less quirky than at what may at first blush appear to be because as you note, this is merely a “first pass” involving a summary judgement posture of the case.

        Given the posture of the case, one should take care to avoid diving deeply into the weeds.

    2. 3.2

      “[Query] the “wrongheaded” Fed. Cir. written description comment.”

      Seconded.

      “Not usually” requiring those details is reasonable. The wrongheaded view is “never” requiring those details.

      1. 3.2.1

        Thanks Ben – I’ve been teaching “possession” in property law — we still do the fox case (Pierson v. Post) as well as the Barry Bonds baseball (Popov v. Hayashi).

        This is the way that I think about it: Invention is ordinarily requires as actual reduction to practice — actually making a working version of the thing. However, to streamline the patent system we allow a legal fiction and say that a patent application can serve as constructive reduction to practice. Since constructive reduction to practice is taking the place of actually making the invention — it seems to me that it should require a showing that the inventor at least knows how to make the thing being claimed.

        1. 3.2.1.1

          Yes, but in patent law an effective constructive reduction to practice requires an enablement, and of course “possession,” while used in some cases, is not a word in 112.

  7. 2

    To me it makes sense that:

    “the level of detail required to satisfy the written description requirement varies depending on the nature and cope of the claims.”

    Here, the claim was: “the use of ultrasound signals to track location of a mobile device”

    and the WD in support was a specification all about the use of signals to track location of a mobile device, the specification adding to that: “base stations 106 may also be configured to transmit a corresponding BS-ID by an ultrasonic signal”.

    Just because a claim (as here) is lengthy doesn’t make it focussed and specific. The more specific the claim, the more specific has to be the corresponding WD (not the other way around as the Ariad quote seems to suggest).

  8. 1

    A reminder to put this in context:

    A patent is a legal document and not an engineering document.

    1. 1.1

      Unless you’re in the grown-up arts, in which case you need to describe that thing “that everybody knows how to make” in molecular detail.

      1. 1.1.1

        There is NO unless – as a matter of both fact and law.

        That you merely feel otherwise is very much a part of your bizarre bias against certain forms of innovation.

        My statement is a globally true statement, regardless of art unit.

        Another globally true statement worth noting here, is that as a direct result of the courts “super-empowering” PHOSITA (for the different purpose of their legislating from the bench for 103 purposes), there is a direct and proportional reduction of what is needed for satisfaction of 112 purposes.

        Again, this is regardless of art unit (no matter Malcolm’s feelings).

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