Broadened Claims and Written Description

by Dennis Crouch

Sprint Communications Co., L.P. v. Time Warner Cable, Inc. (Fed. Cir. 2019) (Modified Opinion)(Original Opinion)

In its original decision in the case, a 2-1 appellate panel upheld a jury’s $140 million verdict in favor of the patent holder Sprint.  Time Warner petitioned for rehearing on two grounds: (1) damages apportionment; and (2) written description requirement. In response, the appellate panel has slightly modified its original opinion — but only to better explain its damages decision. As such, the $140 million verdict remains.

On apportionment, Time-Warner argues that the jury was able to rely upon a prior-verdict for damages calculation that did not correctly perform any apportionment to account for the unclaimed portions of its VoIP technology.  In the revised opinion here, the court explained its position:

  1. The “Georgia-Pacific factors, under proper instructions embody[] apportionment principles.”
  2. Here, Sprint’s expert did address apportionment and told the jury that damages should be attributed only to “incremental profits are attributable to the patents in suit.”  Further, the jury instructions indicated that damages should be based upon the value added by the patented features.
  3. Finally, the court noted that Sprint did not propose alternative jury instructions.

Written Description: The divide between the majority opinion (Judges Bryson and Chen) and the Dissent (Judge Mayer) is based upon the second issue — written description.

The Patent Act requires a “written description of the invention, and of the manner and process of making and using it.” 35 U.S.C. 112(a).  Judge Mayer concluded in dissent that description in the specification does not support the full-breadth of the asserted claims.

Here, the accused infringing systems are Voice-over-Internet-Protocol (VoIP) systems. The claims are not directed to internet protocol (IP) but rather use the broader category of “packet communication.”  Why not claim IP?: the original specification does not mention internet protocol but instead is directed toward a separate packet-communication form known as asynchronous transfer mode (ATM).  ATM was popular legacy telecommunications systems, but is being largely replaced by IP.  Although ATM and IP both involve packet communications, they are quite different in how they work.  For instance, ATM creates a virtual circuit / fixed call path while IP does not.

For Judge Mayer, the bulk of the specification is focused on the virtual circuits with no disclosure of other packet networks. He concludes that “the specification’s disclosure makes sense only in the context of ATM technology.”  As such, the claims that cover non-ATM IP-switching are not supported by the written description.

The majority disagreed with Judge Mayer and found sufficient support (giving deference to the jury’s implicit fact finding).  In its analysis, the majority first noted that IP technology “is not expressly excluded” by the specification and that the specification is not expressly limited to ATM:

[T]he specification refers to “[b]roadband systems, such as Asynchronous Transfer Mode (ATM),” a formulation that strongly suggests that the patents are not limited to ATM technology.

In addition, Sprint presented evidence that a person of skill in the art would understand the disclosure to — especially the term “broadband” — to include IP.

For the majority, the evidence here was enough to allow the patent to remain valid.  Even if the result is uncomfortable, it is easier to see after considering the level of deference.  The court should only overturn the jury verdict if the only reasonable conclusion is that invalidity was proven with clear and convincing evidence.

3 thoughts on “Broadened Claims and Written Description

  1. 2

    It would be interesting to see how this fits with MIDCO v Elekta, similar issue slightly different context, claim construction v. 112, p1 in the present case. In Elekta, the issue was whether the term “conversion to a selected [digital] format” read on both “analog to digital” or “digital to digital” conversion of imaging data. Clevenger reasoned the former only even though the specification described the importation of data vie the ethernet and conversion to a selected digital format. Newman dissented, and as usual she had the correct position.

    I have not read the opinion, but I guess Mayer’s point is whether the patentee had possession of IP networks at the time of filing. My guess is they did not.

  2. 1

    For Judge Mayer, the bulk of the specification is focused on the virtual circuits with no disclosure of other packet networks. He concludes that “the specification’s disclosure makes sense only in the context of ATM technology.” As such, the claims that cover non-ATM IP-switching are not supported by the written description…

    In its analysis, the majority first noted that IP technology “is not expressly excluded” by the specification and that the specification is not expressly limited to ATM:

    In addition, Sprint presented evidence that a person of skill in the art would understand the disclosure to — especially the term “broadband” — to include IP.

    Of course, the question isn’t whether one could construe the disclosure to mention the scope – its not a new matter argument – but whether one of ordinary skill would believe the patentee to possess the scope, and possession is shown by sufficient examples to prove dominion over the entire breadth.

    If I invent a new car, and then I say “This car is but one example embodiment of a new invention.” and then claim a scope that comprises “all new inventions” you don’t need to take expert testimony about whether I have enabled all future inventions for all time, the claim on its face is laughable based on the disclosure.

    When teachings for an ATM example simply do not apply to IP, it is incumbent on the draftee to include an IP example, and not merely surmise that his ATM invention could be applied to IP just because it falls under the general rubric of “broadband.” It makes as much sense to believe that demonstration of an ATM technique implies possession of an IP technique as it does to say that I possess *a* house, therefore its only reasonable to assume I also own Trump Tower NY, as they are both buildings. Again, as the example goes, if my new car has a fuel efficient engine, a claim to that engine meets written description, but all claim to all fuel efficient engines does not.

    Perhaps this claim would have been better challenged under enablement, along with the citation that it is the specification, not skill in the art, which enables novel aspects. If there is no teaching how to perform it outside of ATM, and the scope includes distinct non-ATM embodiments, the specification did not provide an enabling teaching for those embodiments. Of course, my suggestion to try enablement is hindsight and based upon the fact that it doesn’t cost me anything to reject on as many grounds as I want. I too would have thought that WD would have been the way to go. Lo siento, dear defendant.

    I once read a PTAB appeal where they upheld converting any IP address version to any other IP address version when the specification only specifically taught IPv4 to IPv6 by generating a randomized prefix. Anyone with even passing knowledge of the art knew that the teaching required the specific structures of 4->6 for at least the reason that you couldn’t follow the teaching in reverse to convert a 6 to a 4 (some astute viewers might call a unidirectional teaching to a bidirectional claim an easy win). Patentee’s strong argument was that he was entitled to claim future, unmade versions the IP standard that might work with the invention, which is an excellent argument to make on the record. 112a rejections were reversed. I’m glad to see a consistency of skill amongst the appellant tribunals.

    1. 1.1

      Hi RandomGuy, interesting comment. I am not a litigator, but I often see this pattern unfold when reading patent cases: The patent describes technology X (*ATM networks), but claims are written broadly enough to cover technology Y (*IP networks), so there is a big argument about whether technology Y (*IP) is enabled. No other technologies are considered.

      If the patentee is arguing that the scope includes *all packet communication networks,* would it not be better for the defense to go find the most off-the-wall, one-off packet communication protocol that exists? Certainly, out of all the packet communication protocols that exist (and there are dozens to hundreds), you can find one that is vastly different. Why limit enablement argument only to IP, just because that is the protocol at hand for infringement?

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