Tag Archives: Written Description

35 U.S.C. 112 SPECIFICATION. (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 the invention.

CAFC: Claimed “Acid” Precludes Coverage for “Salts”

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Kao CorporationKao Corporation v. Jergens Company (Fed. Cir. 2006, 05–1038).

by Bradley Crawford

This is a patent infringement case about removing “keratotic plugs,” i.e., blackheads, from facial skin. The claimed method encompasses a method for removing the keratotic plug by using a cosmetic article (not defined in the application but the “keratotic plug remover” is described in the specification as a “poultice” or a “cosmetic paste”), the method comprising 1) wetting the skin or the cosmetic article, 2) applying the cosmetic article to the skin and then 3) removing the cosmetic article after drying. The cosmetic article comprises 1) a substrate – essentially a backing material, and 2) a layer comprising a poly (alkyl vinyl ether maleic acid) copolymer or a poly(alkylvinyl ether maleic anhydride) copolymer.

The defendant’s product was used to remove blackheads and it contained the claimed poly(alkyl vinyl ether maleic acid) copolymer or a poly(alkylvinyl ether maleic anhydride) copolymer, but it also contained 2% by weight of aminomethyl propanol (a base that reacts with some of the acid groups in the copolymer).

The District Court construed poly(alkyl vinyl ether maleic acid) copolymer or a poly(alkylvinyl ether maleic anhydride) copolymer to not include the salt form of the copolymer because the “plain meaning” of the claims precluded salts. The District Court also relied on the fact that the patentee later filed an application specifically directed towards the salts of the copolymers claimed in the patent in suit – this was seen as evidence that the patent in suit did not cover salts. The CAFC also made note of this fact and relied on it.

(Note to all of the chemical patent drafters out there, if you are claiming compounds that contain acids or bases, you have to disclose and claim the corresponding salts. You just have to.)

Ultimately, the District Court found the patent to be valid and enforceable, but not infringed.

On appeal, the defendant argued the patent was invalid for: 1) lacking written description, 2) being obvious, and 3) inequitable conduct, while the patentee argued there was infringement. The CAFC rejected all of these arguments.

The District Court found there was written description for a claim amendment made by the patentee and the CAFC, while sympathetic to the patentee’s argument, found that the District Court’s judgment was not “clearly erroneous.”

The obviousness argument was based on a lack of “unexpected results.” More specifically, the defendant alleged both procedural and substantive arguments, including 1) the district court failed to use the closest prior art and 2) the district court failed to properly assess the “totality of the evidence.”

The inequitable conduct allegation was based on the patentees presenting only the most positive data to the Patent Office. The parties agreed that the non-disclosed material was material but the CAFC did not find the requisite intent because the missing data was eventually presented to the examiner. The CAFC was sympathetic to the defendant’s argument, but was unwilling to disturb the District Court’s decision as it was not abuse of discretion.

The CAFC also rejected the patentee’s infringement argument and distinguished two cases that stood for the proposition that “a claim that recites an acid may be literally infringed by the salt of the acid, where both have the same functionality.”

For an unexplained reason, the patentee did not assert infringement under the doctrine of equivalents.

Two concurring in part and dissenting in part opinions were also filed.

Bradley W. Crawford is a attorney at MBHB LLP focusing his efforts on patent litigation, prosecution, and counseling.  Prior to joining MBHB, Mr. Crawford worked in the areas of synthetic organic chemistry as well as medicinal chemistry. 

CAFC Written Description Jurisprudence: “OPAQUE”

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LizardTech v. Earth Resource Mapping (Fed. Cir. 2005) (on request for rehearing).

Plaintiff LizardTech lost its case at the Federal Circuit because its written description was lacking. 

The asserted patent was related to the use of discrete wavelet transform (DWT) to compress digital images. The specification provides an example method for creating a seamless DWT.  One of the claims included a claim to seamless DWT without including all of the limitations of the example method.

In its original decision, the CAFC stated the rule that a claim will not be invalidated under Section 112 for only disclosing a single embodiment.  However, the court went on to determine that the claim in question was improperly directed at “all seamless DWT’s” — a coverage not adequately supported by a single embodiment.

The CAFC has refused LizardTech’s request for rehearing, but has issued concurring and dissenting opinions.

Lourie, Michel, Newman: Disclosure containing only one embodiment will result in limiting the scope of the claims to cover only that embodiment.

[Claims] must be interepreted, in light of the written description, but not beyond it, because otherwise they would be interpreted to cover inventions or aspects of an invention that have not been disclosed. Claims are not necessarily limited to preferred embodiments, but, if there are no other embodiments, and no other disclosure, then they may be so limited. One does not receive entitlement to a period of exclusivity for what one has not disclosed to the public.

Rader, Gajarsa:

“This court’s written description jurisprudence has become opaque to the point of obscuring other areas of this court’s law.” 

Supreme Court: LabCorp Briefing Round I [UPDATED]

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InfringingProducts008LabCorp v. Metabolite (on writ of certiorari).

This case involves a patented method of correlating a body protein level with a vitamin B deficiency.  (U.S. Patent No. 4,940658).  The claim in question (Claim 13) includes two steps: (1) assaying a body fluid for an elevated level of total homocysteine and (2) correlating an elevated level of total homocysteine with a folate deficiency. (paraphrased).

The patent holder won at trial and at the CAFC.  The defendant, Metabolite, then brought its case to the Supreme Court arguing that the patent is invalid because it “claim[s] a monopoly over a basic scientific relationship used in medical treatment such that any doctor necessarily infringes the patent merely by thinking about the relationship after looking at a test result.”

Interestingly, the question presented is not firmly grounded in any particular rule of patent law.  Rather, it implicitly raises issues of indefiniteness, enablement, written description, and patentable subject matter. (to name a few).  However, the Supreme Court has given some indication that it is most interested in this case because of the issue it raises regarding the patenting of natural phenomena under Diehr.

LabCorp has filed its brief on the merits as have a number of third parties:

Petitioner’s Brief  PDF (211 KB)

In Part I, Petitioner LabCorp’s stance is essentially that the law is correct, but that it has been misapplied in this case.

Claim 13 violates this Court’s longstanding rule barring patents on “laws of nature, natural phenomena, and abstract ideas.”

According to LabCorp, the claim involves “no actual invention beyond the scientific discovery it recites.”  The claimed correlation is a scientific principle or law of nature, and its discovery alone cannot be patentable.  The “trivial pre-solution” activity of assaying “cannot transform claim 13 into a patentable invention.”  Here, Petitioner never strays far from the precedential pillars of Diehr, Chakrabarty, Funk Bros., and Flook.

In Part II, LabCorp goes on to argue that the claim is neither definite, enabled, nor adequately described.  The Brief appears to ask the court to invalidate any claim that includes a “correlating” step unless the process of how to calculate a correlation is spelled out in the specification. 

The Federal Circuit relied on the accepted dictionary definition of “correlate” as meaning “to establish a mutual or reciprocal relationship between.” But nothing recited in the claim or disclosed in the specification tells a practitioner how to actively “establish” a “relationship” between a particular test result and a vitamin deficiency. At most, the Patent discloses that such a scientific relationship

exists.

More is required for a valid claim. . . .

In the remaining sections of the Brief, Petitioner argues that, on policy grounds, a very broad claim hinders scientific and technological progress and that the lower court judgment should be reversed.

Solicitor General’s Amicus Brief for the U.S. Government  PDF (165 KB)

The Solicitor General with assistance from the PTO’s counsel has filed its brief that falls closely in line with its prior unsuccessful brief in opposition to the petition for certiorari. 

In line with Petitioner, the Government agreed that the patent “appears to [impermissibly] claim all substantial practical applications of the natural relationship.” However, the Brief specifically states that this case should not be decided on an issue of whether a law of nature has been improperly claimed because the lower court record has not been developed on this issue. Directly addressing Petitioner’s part II, the Government argues that the specification does satisfy the requirements of 35 USC 112 “by describing, enabling, and claiming the method.”

Intellectual Property Owner’s Association (IPO) Brief  PDF (97 KB)

IPO realized that the question presented for review in this case does not directly challenge the current standards for patentable subject matter. However, the Supreme Court has indicated an interest in considering whether the patent-in-suit claimed patentable subject matter. 

IPO believes that the current standards for patentable subject matter, as set forth by the Court in

Diehr, correctly delineate between those innovations that should be eligible for patent protection and those that should not. Accordingly, IPO believes that this case should not serve as a vehicle for overturning or altering those standards. Rather, this case should reinforce the standards of Diehr and thus, support the expectation that innovations in yet unknown areas of technology will be eligible for patent protection.

Specifically, IPO argues that a broad scope of subject matter eligibility properly places research and development decision-making into the hands of individuals and private entities rather than in the judiciary. This “free market” approach “beset allocates research and development resources without judicial entanglement.”  The requirements of novelty, nonobviousness, and description protect against over-reaching patents and warrant against further restricting patentability based on subject matter.

* NOTE: I was a coauthor of the IPO brief along with Paul Berghoff and Joshua Rich from MBHB as counsel for IPO.  The IPO Board of Directors approved the Brief.

Affymetrix Brief PDF (104 KB)

Affymetrix is a supplier of commercial DNA microarrays and “has an interest in ensuring that patents not issue on basic laws of nature so as to impede scientific progress in analyzing DNA and gene expression.”  Affymetrix argues that the fact that “elevated levels of an amino acid in the blood correlated to a vitamin deficiency” is a natural phenomenon that leaves claim 13 unpatentable under current precedent.

Interestingly, Affymetrix argues that ambiguity of whether a claim impermissibly covers a natural phenomena should be resolved in favor of invalidity to avoid serious constitutional questions. (citing Feist).

Public Patent Foundation PDF (375 KB)

PubPat argues that the CAFC has gone astray by over-reaching the permissible bounds of patentable subject matter. (Citing Alappat and State Street). Rather, PubPat would have the Court return directly to Flook.

Reviews Coming:

Download Bear Stearns & Lehman Brothers Amicus Brief.PDF (3617 KB)

Download American Heart Association.PDF (3800 KB)

Download AARP.PDF (4033.7K)

Download AMA.pdf (2553.5K)

Download AMEX.pdf (527.0K)

Download AmerClin.pdf (3007.8K)

Download CCIA.PDF (2590.7K)

Download IBM.pdf (2283.3K)

Download NYCBLA.pdf (691.6K)

Download PatNotProf.pdf (999.6K)

Download PeoplMedSoc.pdf (3316.8K)

Patently-O Blog: Terms of Use

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Patently-O Blog: Terms of Use

Updated December 1, 2016

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Under 102(g), Conception of Prior Art Requires Appreciation of Invention

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Invitrogen Corp. v. Clontech Laboratories (Fed. Cir. 2005).

By Donald Zuhn, Ph.D. (Patently-O Guest Author).

In an appeal from a District Court judgment invalidating more than two hundred claims in three Invitrogen patents as being anticipated under § 102(g)(2), the Federal Circuit vacated and remanded, holding that the District Court misapplied the law of appreciation when determining the date of conception for researchers at Columbia University. The Federal Circuit, however, affirmed the District Court’s rulings on enablement, written description, and infringement.

The patents at issue relate to a genetically modified version of the enzyme reverse transcriptase, that has use in the field of molecular biology. Naturally-occurring (or unmodified) reverse transcriptase possesses both DNA polymerase and RNase H activities, the former permitting the enzyme to synthesize a DNA copy (cDNA) of a messenger RNA (mRNA) template, and the latter permitting the enzyme to degrade the mRNA template following cDNA synthesis. In contrast, the genetically modified enzyme lacks RNase H activity, and therefore, is unable to degrade the mRNA template following cDNA synthesis, allowing researchers to reuse the mRNA template to create additional cDNA copies..

While neither party disputed the District Court’s determination that Invitrogen had reduced a modified reverse transcriptase lacking RNase H activity to practice in January of 1987, Invitrogen did find fault with the lower court’s ruling that Drs. Stephen Goff and Naoko Tanese, two researchers at Columbia University, had conceived of such an enzyme before Invitrogen had reduced the enzyme to practice. Drs. Goff and Tanese had begun their work in 1984 by preparing a panel of bacterial mutants having modified reverse transcriptase genes. The panel included two mutants that the Columbia University researchers would later show possess modified reverse transcriptase lacking RNase H activity. However, due to limitations in the assays that Drs. Goff and Tanese were using to measure RNase H activity, they were unable to conclusively establish that any of the mutants possessed modified reverse transcriptase lacking RNase H activity at the time the mutant panel was prepared. In March of 1987, Drs. Goff and Tanese used a new assay that they had developed to finally establish that two of the mutants from their panel possessed the modified enzyme. They were also able to correlate the results obtained with their new assay with their late 1986 sequencing analysis of the mutants.

Following a series of pre-trial motions regarding the issues of conception, enablement, written description, and infringement, the District Court determined, inter alia, that Drs. Goff and Tanese (a) had conceived of a genetically modified reverse transcriptase lacking RNase H activity either in December of 1984 when they had isolated mutants possessing modified reverse transcriptase, or in January of 1986 when they had sequenced the reverse transcriptase genes in these mutants; (b) had actually reduced their invention to practice in March of 1987 when they established that two mutants from their panel possessed modified reverse transcriptase; and (c) were diligent in reducing their invention to practice, and did not abandon, conceal, or suppress it. However, despite these rulings, the District Court refused to find that the work of Drs. Goff and Tanese anticipated Invitrogen’s patents under § 102(g)(2), arguing that anticipation posed factual questions requiring resolution on a claim by claim basis.

Stating that conception “require[s] more than unrecognized accidental creation,” and instead “requires that the inventor appreciate that which he has invented,” the Federal Circuit found that the District Court erred by establishing Drs. Goff and Tanese’s conception before January of 1987 and granting partial summary judgment for Clontech. Relying on decisions of its predecessor Court, which “require some connection between the physical result (the invention) and the belief (by the inventor),” the Federal Circuit determined that the record was inconsistent with the District Court’s notion that Drs. Goff and Tanese set out to create a modified reverse transcriptase or appreciated in 1984 that their mutant panel contained two mutants possessing modified reverse transcriptase. Rather, the Federal Circuit believed that this case “fit[] squarely within the unrecognized, accidental duplication cases.”

However, while the Federal Circuit determined that the evidence excluded both dates of conception proposed by the District Court, the Federal Circuit also found that Dr. Goff’s deposition testimony precluded it from finding that the District Court abused its discretion in refusing to grant partial summary judgment for Invitrogen on the issue of conception. In particular, Dr. Goff had testified that he had formed a suspicion in late 1986, based on his difficulties analyzing the mutants, that two of the mutants possessed modified reverse transcriptase lacking RNase H activity. Because a reasonable fact-finder presented with Dr. Goff’s testimony could conclude that the evidence preceding the researchers’ March 1987 testing might suffice, under the applicable standard, to corroborate Dr. Goff’s suspicions about the two mutants, the Federal Circuit vacated the District Court’s invalidity judgment and remanded the case for further proceedings.

NOTE: This post was written by patent attorney Donald Zuhn, PhD. Don is a true expert in cutting edge biotech patent law and practices both litigation and prosecution at MBHB LLP in Chicago. (zuhn@mbhb.com).

LabCorp v. Metabolite: Supreme Court To Hear Patent Case Questioning Patentability Of Medical Method

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InfringingProducts008Laboratory Corp. of America (LabCorp) v. Metabolite Laboratories (Supreme Court 2005).

The Supreme Court has announced that it will hear LabCorp’s appeal that will again question the scope of patentability in the U.S.  Specifically, the High Court will review the question of whether a patent can claim rights to a basic scientific relationship used in medical treatment if the claim is limited to “correlating” test results.

The question on review is as follows:

Whether a method patent setting forth an indefinite, undescribed, and non-enabling step directing a party simply to “correlat[e]” test results can validly claim a monopoly over a basic scientific relationship used in medical treatment such that any doctor necessarily infringes the patent merely by thinking about the relationship after looking at a test result.

Patent in suit: This case revolves around claim 13 of Metabolite’s U.S. Patent No. 4,940,658

13. A method for detecting a deficiency of cobalamin or folate in warm-blooded animals comprising the steps of:

assaying a body fluid for an elevated level of total homocysteine; and

correlating an elevated level of total homocysteine in said body fluid with a deficiency of cobalamin or folate.

Thus, the method comprises two steps, (i) assaying a body fluid and (ii) correlating the measure with a mineral deficiency.

LabCorp’s argument: LabCorp argues that claim 13 is invalid for a number of reasons.  Most pointedly, although the claim requires a step of “correlating,” there is no description of how the correlation would take place. According to the petitioner, “[s]uch a vague claim cannot be valid; for if it could be, parties could claim patent monopolies over basic scientific facts rather than any novel inventions.” In addition, the claim arguably fails the written description requirement because “the specification does not describe what a practitioner must do to perform the active ‘correlating’ step.”

Comment: The Supreme Court appears bent on making this case a question of subject matter patentability.  If it takes that course, it will likely answer many of the questions left open by Lundgren and Fisher.  Of course, as a general rule the decisions from the Court raise more questions than they answer.

Single Embodiment Of Claim Element Fails To Describe Element Generically

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Patentlyo007LizardTech v. Earth Resource Mapping (Fed. Cir. 2005).

On summary judgment, the district court deemed LizardTech’s patent invalid for failing to meet the written description requirement of 35 USC 112 para 1.  The asserted patents were related to the use of discrete wavelet transform (DWT) to compress digital images.

The specification provides an example method for creating a seamless DWT including the step of “maintain[ing] updated sums” — that procedure is the focus of claim 1.  Claim 21, however, is a broader claim that lacks the “maintains updated sums” limitation.  The specification did not explicitly describe a method that did not include that limitation. (Although claim 21 was included in the original disclosure)

On appeal, the CAFC paid lip service to the rule that a claim will not be invalidated under Section 112 for only disclosing a single embodiment.  However, the court went on to determine that claim 21 was directed at “all seamless DWT’s” — a coverage not adequately supported by the single embodiment.

After reading the patent, a person of skill in the art would not understand how to make a seamless DWT generically and would not understand LizardTech to have invented a method for making a seamless DWT, except by “maintaining updating sums of DWT coefficients.”

[A] patentee cannot always satisfy the requirements of section 112, in supporting expansive claim language, merely by clearly describing one embodiment of the thing claimed.

As noted by David Long, this case is a “must read for those addressing written description (or enablement) issues.

Comments:

  • I see this as a quite odd decision.  First, although claim 21 arguably covers either “seamless DWT” or  “non-seamless DWT,” such a result is explicitly claimed.  The CAFC did not point to any element of claim 21 that was not sufficiently described.  Rather, the court found the claim invalid because an an embodiment arguably covered by the claim (seamless DWT) was not sufficiently described. 
  • A fellow patent attorney and Patently-O reader e-mailed this morning with a different take:

Section 112 requires that the patentee have both possession of the invention and an enabling disclosure. In this case, the Court found that because the patentee had only described (and apart from claim 21) claimed the one embodiment that required “maintaining updating sums of DWT coefficients” this shows that the method including this element was really the scope of what the patentee considered their invention. That is, the patentee didn’t think they had invented a more generic way of creating a seamless DWT that did not include that element.

The Court went on to say that any such generic method is also not enabled — first because it is not described in the specification and second because it is not within the ability of one of ordinary skill to practice without undue experimentation. As the Court noted, both these requirements usually rise or fall together. The last paragraph of the opinion makes clear, however, that even assuming that patentee had possession of this invention (by virtue of claim 21 being part of the original application) the claim is still not enabled. That is, even if one of ordinary skill in the art read claim 21 and recognized that it covered a generic method of creating a seamless DWT, that person still would not have been able to come up with the generic method (i.e., one not using the updating sums element) without undue experimentation. Therefore, the claim doesn’t satisfy the requirements of 112.

Thus, after this case (and as was the case, no pun intended, before LizardTech) one is free to describe one or more embodiments in the application and draft claims that cover other broader embodiments that are not described in the application. Those broader claims will be valid provided that the patentee had possession of those broader embodiments and the broader embodiments are enabled. Presumably they would be enabled because, even though not described in the application, they would still be within the ability of one of ordinary skill in the art to practice without undue experimentation.

  • The lesson for prosecutors is that broad claims will generally require multiple embodiments of each element. Specifically, if you claim A+B+C+D, do not expect that you can claim A+B+C without adequately disclosing that D is not necessary or that D can take alternative forms.
  • Philip Mann of IP Litigation Law Blog was counsel for LizardTech.

Documents:

Assignor Estoppel: Inventor barred from testifying for defense

Patent, Patent Cases 2005,

RailroadPandrol v. Airboss Railway (Fed. Cir. 2005).

Pandrol sued Airboss for infringement of its RR track fastening system that resists erosion.  On summary judgment, the district court found that the patent description was “adequate to satisfy the written description requirement.”  In addition, the lower court barred one of the inventors from testifying for the defense.

Written Description: Section 112 of the patent act requires “sufficient information in the specification to show that the inventor possessed the invention at the time of that original disclosure.”  On appeal, the CAFC affirmed, finding that the claims (as construed) were sufficiently supported.

Assignor Estoppel: In addition, the CAFC reviewed the district court’s exclusion of one of the inventor’s testimony under the doctrine of assignor estoppel.  The judicial doctrine of assignor estoppel prevents the assignor of a patent from later contending that the patent is invalid.

In this case, the defendant wanted to have one of the inventors testify that the patent was invalid — a request denied by the district court. 

On appeal, the CAFC agreed that the court had correctly excluded the inventor’s testimony because it would be “unfair” to allow the inventor to testify against the patent.

File Attachment: 04-1069.pdf (83 KB)

 

Nystrom v. Trex: Take Two

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Nystrom v. Trex Co. (Fed. Cir. 2005). This summer’s Phillips v. AWH decision shifted the focus of claim construction from extrinsic evidence (e.g. dictionaries) to the patent specification. After agreeing to rehear the Nystrom v. Trex appeal to address the effects of Phillips, a Federal Circuit panel (Mayer, Gajarsa, and Linn) has withdrawn its June 28, 2004 opinion (in which Gajarsa had dissented) and has substituted a new unanimous opinion that reaches a different claim construction, resulting in a different case outcome.

Nystrom’s patent related to a design for deck boards that are shaped to shed water. The main claim construction issue related to whether the claim term “board” was limited to boards made of “wood cut from a log” or whether a broader dictionary definition (e.g. “a flat piece of wood or similarly rigid material adapted for special use”) would apply.  In its pre-Phillips opinion, the panel relied on the dictionary definition and claim differentiation (a dependent claim specifically called for “wood cut from a log,” while broader claims did not) to determine that “board” was to be construed broadly.

In its post-Phillips opinion, the same panel noted that Nystrom’s specification and the prosecution history consistently described boards made of wood cut from a log.  The panel dismissed claim differentiation as a basis for its previous broad construction: “[d]ifferent terms or phrases in separate claims may be construed to cover the same subject matter where the written description and prosecution history indicate that such a reading of the terms or phrases is proper.” Regarding the broad dictionary definition previously relied on, the panel noted:

What Phillips now counsels is that in the absence of something in the written description and/or prosecution history to provide explicit or implicit notice to the public – i.e., those of ordinary skill in the art – that the inventor intended a disputed term to cover more than the ordinary and customary meaning revealed by the context of the intrinsic record, it is improper to read the term to encompass a broader definition simply because it may be found in a dictionary, treatise, or other extrinsic source.

Importantly, there was no clear disavowal of claim scope in this case – Phillips doesn’t require as much – but nothing in the intrinsic record supported a construction broader than “wood cut from a log.”

Marcus Thymian is still a Minnesota Vikings fan and has been involved with several recent litigations in which claim construction turned on intrinsic extrinsic.  He is a partner at McDonnell Boehnen Hulbert & Berghoff LLP in < ?xml:namespace prefix = st1 />Chicago.  [Marcus Thymian’s Bio]

Claim Construction: Specification is Always Highly Relevant

Patent, Patent Cases 2005, ,

Elevator023Terlep v. Brinkman Corp (Fed. Cir. 2005).

Stephen Terlep sued Brinkman, Wal-Mart, and Home Depot for infringement of his patent directed to an omni-directional LED.  After construing the claims, the Arkansas federal court granted summary judgment of noninfringement based on the accused products failure to have a “clear plastic tubular holder” as claimed.

On appeal, the Federal Circuit affirmed, finding that the court’s claim construction methods were appropriate under Phillips v. AWH.

In Phillips, the CAFC determined that the specification of a patent is “always highly relevant to the claim construction analysis. Usually, it is dispositive.”  

To apply Phillips, the court analyzed each use of the term “clear” in the claims, specification, and prosecution and came to the conclusion that the district court had appropriately excluded “translucent” from the term’s definition.

Dictionaries: The CAFC went on to find that the district court’s use of dictionary definitions to support its finding from the written description was an appropriate use of the extrinsic evidence.

File Attachment: 04-1337.pdf (57 KB)

Federal Circuit: Nucleotide Sequence of Claimed DNA not Required to Satisfy Written Description Requirement

Patent, Patent Cases 2005,

Capon v. Eshhar v. Dudas (Fed. Cir. 2005).

In an interference proceeding regarding a chimeric genes for cell-surface antibody production, the BPAI the claims of both applications after finding that they both failed to provide an adequate written descriptions as required by 35 U.S.C. 112. Particularly the Board found that the written description must include a listing of the specific nucleotide sequence of claimed DNA.

On appeal, the CAFC reversed, finding that the per se rule requiring recitation in the specification of the nucleotide sequence of the claimed DNA to be incorrect when the sequence is already known in the field.

The Board’s rule that the nucleotide sequences of the chimeric genes must be fully presented, although the nucleotide sequences of the component DNA are known, is an inappropriate generalization. When the prior art includes the nucleotide information, precedent does not set a per se rule that the information must be determined afresh.

On remand, the CAFC asked the Board to further explore whether the applications include appropriate descriptions in light of what is known in the field.

Written Description Does Not Require Explicit Disclosure of Claim Terms

Patent, Patent Cases 2005,

PatentlyOImage042Ex parte Eggleston (B.P.A.I. 2005) (NOT PRECEDENT).

In an application involving a method of mobile communication, the examiner rejected the claims because the subject matter was not “described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time of the application was filed, had possession of the claimed invention.” Specifically, the examiner contended that an explicit limitation in the claims was not present in the written description.

The BPAI reversed the rejection, finding that the original disclosure provided adequate support.

We find that the original description, albeit in different language than is now claimed, would have conveyed to the artisan that the inventors had possession of the subject matter which they now claim at the time of filing the application.

In its decision, the Board affirmed the principle that an “explicit” disclosure of claim terms is not required under 35 U.S.C. § 112, first paragraph. “An invention claimed need not be described ipsis verbis in the specification in order to satisfy the disclosure requirements.

Follow Up:

PTO Board: Disclosure of Sequence Enables at least 5% of Natural Variance.

Patent, Patent Cases 2005, ,

Blast_equationEx parte Bandman, No. 2004-2319, (BPAI 2005)

By Donald Zuhn

In an appeal from a final rejection, the PTO Board reversed rejections based on both the written description and enablement requirements of 35 U.S.C. § 112, first paragraph, and entered a new ground of rejection under 35 U.S.C. § 112, second paragraph one of the claims. (U.S. Application No. 09/915,694). 

Pointedly, the Board found that claims directed to a naturally occurring amino acid (or polynucleotide) sequence at least 95% identical to the disclosed amino acid (or polynucleotide) sequence were enabled and met the written description requirement.

(more…)

Indecipherable Patents

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PatentlyOImage002The June 2005 Corporate Legal Times includes an interesting roundtable discussion on patent reform.  The participants were all in-house patent counsel.  In the discussion, Richard Rodrick of S.C. Johnson raised an issue that has not been touched by any of the proposed patent reforms.

You can write a patent application today that is almost indecipherable, and you’ve got a good chance of getting it out of the patent office with a patent. 

Anyone who regularly reads patent documents knows that Rodrick is right on the money.  Should the Patent Office be issuing more rejections based on a lack of clarity in the specification based on the requirements of Section 112?

LINKS:

Blade Wars: Gillette Wins Latest Round in Multi-Blade Razor Patent Litigation

Patent, Patent Cases 2005,

PatentlyOImage032

Gillette’s patent disclosing a three-blade razor also covers a four-blade version.

Gillette Co. v. Energizer Holdings Co. (Fed. Cir. 2005).

By Baltazar Gomez

Gillette owns U.S. Patent No. 6,212,777 for wet-shave safety razors with multiple blades. Gillette sued Energizer in the United States District Court for the District of Massachusetts alleging Energizer’s QUATTRO®, a four-bladed wet-shave safety razor, infringed claims of the patent. The district court denied Gillette’s motion for a preliminary injunction because it found that the claims covered only a three-bladed razor. On appeal, CAFC vacated the district court’s decision and remanded for further proceeding.

The ’777 patent claims a disposable safety razor with a group of blades, each blade placed in a particular geometric position relative to the other blades. Claim 1 describes a progressive blade exposure as follows:

A safety razor blade unit comprising a guard, a cap, and a group of first, second, and third blades with parallel sharpened edges located between the guard and cap… (emphasis added).

In determining the meaning and the scope of claim 1, the CAFC attempted to place the claim language in its proper technological and temporal context. The Court reasoned that the inventors’ statutorily-required written description in the patent itself, including the claims, the specification and the prosecution history, is the primary source of the meaning of disputed claim language.

Using this standard, CAFC determined that the language “comprising . . . a group of first, second, and third blades” can encompass the four-bladed Energizer razors. To begin, CAFC noted that the claim uses “open” claim terms “comprising” and “group of” in addition to other language to encompass subject matter beyond a razor with only three blades. Moreover, although the specification focused on blade units with three blades, the patent also disclosed a plurality of blades showing that the ‘777 patent covers razors with more than three blades. The CAFC further explained that it may be that a four-bladed razor may be less preferred embodiment, but noted that a patentee typically claims broadly enough to cover less preferred embodiments as well as more preferred embodiments, precisely to block competitors from marketing less than optimal versions of the claimed invention.

Further, CAFC also noted that the specification provided further support for interpreting claim 1 to encompass razors with more than three blades. The first sentence of the written description teaches that the invention relates to razors having a plurality of blades. Moreover, the prosecution of patents related to the ’777 patent also supports reading claim 1 as an open claim. Gillette endorsed an open interpretation of “comprising” when it argued to the European Patent Office (EPO) that a virtually identical claim in Gillette’s European counterpart to the ’777 patent would not exclude an arrangement with four or more blades. Accordingly, the CAFC concluded that the district court erred in limiting the claims of the ’777 patent to encompass razors with three blades because no statement in the ‘777 patent excludes a four-bladed razor.

In dissent, Judge Archer argued that claim 1 should not be construed as permitting a group with more than three blades simply because claim 1 contains the open transition term “comprising” in its preamble.   Judge Archer concluded that a three-bladed razor is not merely a preferred embodiment of the invention, but is the invention itself, and that the inventors did not regard a blade unit with four blades arranged in the described geometry as their invention.

Note: Dr. Baltazar Gomez is a scientific advisor at MBHB in Chicago. Dr. Gomez obtained his PhD in biochemistry from the University of Texas and researched retrovirology as a PostDoc at Cornell University.

Written Description: Defendant’s Own Expert Deposition Testimony Used to Overturn Summary Judgment of Invalidity

Patent, Patent Cases 2005

PatentlyOImage026Space Systems/Loral  v. Lockheed Martin (Fed. Cir. 2005)

By John Smith

Loral, the owner of U.S. patent 4,537,375 (the ‘375 patent), sued Lockheed for infringement of claim 1. The District Court ruled in favor of Lockheed, finding the claim invalid for violating the written description requirement of 35 U.S.C. § 112.

The ‘375 patent is directed to an improved method for maintaining the orientation and attitude of a satellite in space by a process known as station-keeping.  After an initial thrust, the satellite re-checks its position, and often fires its thrusters again to better correct its position. Station-keeping thus uses the limited fuel supply on board a satellite and contributes to shortening the life of satellites. The ‘375 patent discloses a method directed to improving the efficiency of the corrective procedure.

Claim 1 of the ‘375 patent entails a multi-step procedure of thruster-firing, data storage, checking of position and correction of position, and minimization of error in correction of position. Essentially, the satellite fires its thrusters to correct its position, then checks its position and compares its current error in position to its previous error in position before firing its thrusters again. Lockheed argued that the patent was invalid, because the second step of claim 1 was not adequately described in the specification.

Defendant Lockheed’s expert, when asked at deposition where one would find the second step description, answered (over counsel objections) that the second step was depicted in Item 96 of Figure 2B.  The court found this, along with the testimony of plaintiffs’ expert, established that the specification sufficiently described the claim.

Lockheed also argued that the second step of claim 1 was not inherent in the written description because the specification did not state that the second step was necessarily used in the satellite position correction procedure. On appeal, the Federal Circuit noted that the second step of the claim at issue in the procedure comes only (if at all) after thrusters are fired and actual position error and historical position error are compared. According to the Federal Circuit, this “does not diminish the descriptive content of the specification.”

The Federal Circuit reversed the finding of invalidity, and remanded back to the U.S. District Court for the Northern District of California for further proceedings.

John Smith is an attorney at MBHB LLP in Chicago.  He earned both his JD and PhD (inorganic chemistry) from Vanderbilt University. He has co-authored numerous articles and served as a faculty member in the Chemistry Department of Lipscomb University in Nashville, Tennessee.

Notes:

It is proper to limit the scope of the claims according to the specification

Patent,

PatentlyOImage022Rhodia Chimie v. PPG Industries Inc., (Fed. Cir. 2005)

By Baltazar Gomez, Ph.D.

Rhodia is an international chemical company and the assignee of U.S. Pat. No. 6,013,234 (“the ‘234 patent”). The patent discloses and claims certain essentially spheroidal precipitated silica particulates. Rhodia markets “Micropearl” which is a silica particulate covered by the patent. PPG also makes three silica products, namely, Hi-Sil SC60M, SC72 and SC72C. Rhodia alleges that these products infringe claim 1 of the ‘234 patent.

The district court granted summary judgment for noninfringement in favor of PPG. On appeal, Rhodia argued that the district court erred in interpreting claim 1. The CAFC, however, affirmed the district court’s construction.

Claim 1 of the ‘234 patent partly reads as follows: Dry, dust-free and non-dusting, solid and homogeneous atomized precipitated silica particulates essentially spheroidal in geometrical configuration… (emphasis added)

In addition, the specification included examples tested both for flowability and dusting properties. Flowablity tests were performed by a pour test which compared the flowability of Micropearl with the prior art. The dusting tests were measured by the German DIN 53 583 standard (the “DIN test”).

During the district court’s claim construction hearing, PPG asserted that the phrase “dust-free and non-dusting” should be interpreted literally to mean “no dust cloud whatsoever.” Conversely, Rhodia argued that such a meaning was improper in view of the results of the pour test that showed production of some dust. Accordingly, Rhodia advocated construing “dust-free and non-dusting” to mean “very low dust.”

The district court was concerned, however, that Rhodia’s proposed definition of the phrase was relative and that such a definition would not meet the statutory requirement that the claims particularly point out and distinctly claim the invention. Thus, to resolve the perceived ambiguity of the phrase, the district court adopted a construction based upon the only meaningful guidance provided in the patent, namely the DIN test.

On appeal, Rhodia argued that the DIN test was not the only means by which to assess the amount of dust produced by the invention. Rhodia asserted that the pour test could also be used to determine the level of dustiness, and therefore, it is inappropriate for the district court to limit the phrase “dust-free and non-dusting” to the DIN test. Further, Rhodia cited statements made during prosecution of the ‘234 patent explaining that the pour test could be used to show the non-dusting and free-flowing properties of the ‘234 patent.

In affirming the district court’s construing of “dust-free and non-dusting”, CAFC noted that although the pour test may also provide evidence of dustiness, the results of the pour tests presented in the ‘234 patent were only identified as evidence of the products’ flowability.  The CAFC further noted that there is no language in either the claims or the written description that taught the application of the pour test to determine the level of dustiness.  Finally, CAFC stated that Rhodia’s statements made during prosecution cannot serve to fill such a gap.  Thus, the CAFC concluded that the district court did not erred in limiting the scope of the claims by defining the phrase “dust-free and non-dusting” to the only disclosure in the patent.

Note: Dr. Baltazar Gomez is a scientific advisor at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago. Dr. Gomez obtained his PhD in biochemistry from the University of Texas and researched retrovirology as a PostDoc at Cornell University.

File Attachment: Chimie v. PPG.pdf (98 KB)

March 2005 Report on New Academic Research

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Each month I post a note discussing new research from the academic side of patent law.  This March edition includes three great articles that relate to either legislative changes (prior use statute, post grant opposition) or upcoming court decisions (Phillips claim construction case).  Feel free to e-mail suggestions for April’s edition.

  1. Tom Fairhall and Paul Churilla, Prior Use of Trade Secrets and the Intersection with Patent Law, 14 Fed. Cir. Bar J. 455.  Fairhall and Churilla present a timely article on prior use rights that notes how the current prior use statute (35 USC 273) does not provide the scope necessary to truly protect a prior user’s expectations or investments.  The article is quite timely because FTC proposals to expand the statutory prior use rights is gaining some teeth in the patent community and on the Hill.
  2. Mark Lemley, The Changing Meaning of Patent Claim Terms, available at SSRN.  Professor Lemley’s article is also timely — he discusses at what particular point in time should the meaning of claim terms be fixed.  This is important because the ordinary meaning of terms in the English language change over time.  The major temporal candidates are (i) at the time of the invention (currently used for novelty and nonobviousness); (ii) at the time the application was filed (currently used for enablement or written description); (iii) a the time the patent issues (currently used for means-plus-function claim construction); and (iv) at the time of the infringement (at least some times used to determine infringement).  Lemley agrees that each candidate has a sound legal foundation.  However, he argues that the best approach moving forward is to fix the meaning at the time the patent application is first filed.
  3. Jay Kesan and Andres Gallo, Why ‘Bad’ Patents Survive in the Market, available at SSRN. The professors provide a game theory model to show how would-be invalid patents can survive and be valuable in the marketplace.  Essentially, the transaction costs make it difficult to mount an effective challenge to improperly granted patents.  Their work will serve as the theoretical basis any proposed post-grant opposition procedures.  Specifically, the authors “conclude that a low-cost, post-grant opposition process based primarily on written submissions within a limited estoppel effect . . . will serve as an effective instrument for improving the quality of patents that are issued and enforced.”

Snippets: Review of Developments in Intellectual Property Law

Articles and Publications, Patent,

MBHB’s snippetsTM newsletter provides a timely review of developments in intellectual property law. Here is a table of contents of the most recent issue (March 2005: Volume 3, Issue 1):

  1. Daniel Boehnen and Deana Larkin, Trends in E-Discovery: New Local Rules and Recent Judicial Opinions.
  2. Michael Greenfield, Jennifer Pope, Dennis Crouch, and Elaine Chang, The Primary Source for Claim Construction: Dictionary or Specification.
  3. Kevin Noonan, The Continued Confusion Over Written Description.
  4. Dennis Crouch and Baltazar Gomez, Legislative Update: Joint Research Agreements May Protect Patent Rights.

You can e-mail the editor (snippets@mbhb.com) to receive a PDF copy of the newsletter.  Include your mailing address if you would like a hard-copy.  In the e-mail, please indicate your technology and legal interest: (Biotech, Electrical, Software, Chemical, Mechanical, Litigation, and/or Prosecution). 

Past Issues:

CAFC: Ordinary Meaning Defined By Context of Written Description

Patent, Patent Cases 2005

PatentlyO060Medrad v. MRI Devices (Fed. Cir. 2005).

Medrad filed suit against MRI Devices for allegedly infringing Medrad’s patented radio frequency (RF) coils used in magnetic resonance imaging (MRI).  The district court granted a partial summary judgment of invalidity after construing the claims of the patent.

On appeal, the CAFC struggled to give meaning to a claim that “itself provides little guidance.”

Interpreting the term “substantially uniform,” the court rejected Medrad’s argument that the “court may not look to how an invention functions in determining the meaning of claim terms” — finding that proposition “as unsound as it is sweeping.”

We cannot look at the ordinary meaning of the term . . . in a vacuum. Rather, we must look at the ordinary meaning in the context of the written description and the prosecution history. Quoting DeMarini Sport (Fed. Cir. 2001).

Basing its decision on (1) claim language, (2) the specification, and (3) expert testimony, the appellate court found that “substantially uniform” in reference to a magnetic field meant that the magnetic field is sufficiently uniform to obtain useful MRI images.

Affirmed.