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.

American Piledriving v. Geoquip: Resolving Different Courts’ Constructions

Patent, ,

By Jason Rantanen

American Piledriving Equipment, Inc. v. Geoquip, Inc. and American Piledriving Equipment, Inc. v. Bay Machinery Corporation (Fed. Cir. 2011) Download 10-1283
Panel: Bryson, Gajarsa, and Linn (author)

One of the Federal Circuit's primary purposes is to ensure consistent claim construction results.  American Piledriving v. Geoquip highlights this role. 

American Piledriving holds Patent No. 5,355,964, which relates to counterweights for "vibratory pile drivers."  By rapidly rotating these unevenly weighted counterweights in opposite directions, vibratory forces are generated that force the pile into the ground.  Early counterweights possessed several drawbacks that the invention of the '964 purport to solve.

The district court proceedings on appeal involved two suits brought by American Piledriving, one in the Eastern District of Virginia and the other in the Northern District of California, against distributors of vibratory pile drivers manufactured by Hydraulic Power Systems, Inc. (These two suits were part of a set of seven brought by American Piledriving, all in different districts).  The crucial portion of representative claim 1 reads:

a counterweight rotatably carried in said receiving means for rotation about a rotational axis, said counterweight having a cylindrical gear portion and an eccentric weight portion integral with said cylindrical gear portion, said eccentric weight portion having at least one insert-receiving area formed therein, said counterweight being made of a first metal;

At issue were the district courts' constructions of three claim terms, two of which the courts construed differently: "eccentric weight portion" and "insert receiving area." (The courts reached the same contruction for "integral," a construction the appellate court affirmed).  Based on their constructions of these terms, the two district courts granted summary judgment of noninfringement.

On appeal, the CAFC agreed fully with the Virgina court, affirming its constructions and grant of summary judgment.  The Calfornia court fared slightly less well: the panel disagreed with the additional limitations the trial court added but nonetheless affirmed summary judgment of noninfringement for the two products that were also involving in the Virginia litigation, reversing and remanding for further proceedings on a third product at issue only in the California litigation. 

Although much of American Piledriving comes across as a typical claim construction opinion concluding that well-established principles of claim construction supported the district courts' interpretations, the portions of American Piledriving addressing the two courts' different interpretations of "eccentric weight portion" and "insert receiving area" are somewhat noteworthy.  All three courts determined that some structure provided by the specification was required; however, the CAFC concluded that the California court's constructions went beyond what the rules permitted:

While both district courts indicated that the term should be defined as extending from the face of the gear, the California court also required that the “eccentric weight portion” extend from a particular portion of the gear, extend in a specific direction, and include a receiving area formed to receive a tungsten rod. This court agrees with American Piledriving that nothing in the specification compels the reading of these additional limitations into the construction of “eccentric weight portion.”

Unfortunately, the CAFC's discussion of the differences between these two courts' analyses of the use of the structure in the specification to limit the functional claim elements is limited to this brief passage and a similar passage in its section on "insert receiving area."  This is disappointing given the court's build-up at the beginning of the opinion, which held promise for a thorough dissection of where the cutoff might be in terms of how much structure from the specification should be part of the claim constuction.  See Slip Op. at 10 ("In the course of construing the claims in this case, the Virginia district court carefully avoided redefining the claims and reading limitations into the claims from the written description. The California district court, however, inappropriately added several limitations not contained in the inventor’s claimed definition of the scope of his invention. This disparate treatment of the same issues before two competent and capable district courts is thus instructive."

Guest Post: Centocor, the Antibody Exception, and Claiming Only What was Invented

Patent, , , , ,

By Oskar Liivak
Assistant Professor, Cornell Law School

As Jason Rantanen’s post describes, Centocor claimed but failed to disclose any fully humanized antibodies.  Abbott consistently pushed this argument and they won.  It was the simplest and most direct way to dispose of the case.  This approach necessarily left other important issues undecided, however.  Both Eli Lilly and I separately filed amicus briefs in favor of Abbott and we both argued for a decidedly more aggressive, alternative argument for written description invalidity.  As the Court in Centocor disposed of this case by simpler means, clear judicial resolution of our arguments will have to wait for another day.

This post highlights those remaining issues, why we should still care about them, and how they are tied to a much larger ongoing struggle in patent law – can a patent claim cover more than what was actually invented (i.e. conceived and disclosed) by the inventor?  I think the answer is clear – it cannot – but not every patent attorney or CAFC judge agrees.  I think this is perhaps the most important ongoing debate in patent law.  § 112 as applied to antibodies is but one battlefront in this larger fight. 

ABANDONING THE ANTIBODY EXCEPTION
The arguments in both of our briefs would have resolved the case in favor of Abbott but would have also resolved a very problematic ambiguity relating to the written description for antibodies generally – the so-called ‘antibody exception.’  The PTO’s written description guidelines seem to suggest that disclosure of an antigen alone can provide § 112 support for any antibody that binds to that antigen.  See U.S.P.T.O., Written Description Training Materials Revision 1 March 25, 2008 at 45-46.  Cases like Noelle v. Lederman, 355 F.3d 1343 (Fed. Cir. 2004), have cited these guidelines but the guidelines have yet to be really at the center of a case – even here in Centocor the CAFC distinguishes them.  The trouble is that those PTO guidelines are in tension if not complete conflict with written description as described in Ariad v. Eli Lilly, 598 F.3d 1336, 1354 (Fed. Cir. 2010) (en banc).  With the rapid growth of and enormous revenues associated with antibody related therapies, patent law must clarify this issue.

The crux of the argument is simple.  I believe that the disclosure requirements of § 112 limit claims to the subject matter actually invented by the inventor and disclosed by the specification.  Ariad at 1351.  If we consistently applied this rule for disclosure in light of today’s understanding of protein structure, disclosure of a well characterized antigen alone would not provide support for an antibody that binds to that antigen.  And disclosure of one actual antibody provides § 112 support only for that antibody—not the entire genus of antibodies that binds to the antigen.  This view is in direct conflict with the antibody exception.  Here is the argument.    

Ariad reaffirmed that § 112 “requires … that the specification must … show that the inventor actually invented the invention claimed.” Id.  As best I can surmise, to invent something a person must conceive it.  Conception is how patent law decides when something is invented; conception is how patent law decides who invents something; and it should be the way patent law determines what the something is that was invented.  From the perspective of conception (namely a “definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice”) the antibody exception and the broad claims it would allow start to look totally absurd. 

The problem is, as put by Eli Lilly in their amicus brief, “[e]ven with today's most advanced scientific tools, it is impossible to predict the actual structure … of a not-yet-known antibody based on the structure of an antigen or even the structure of another antibody that binds that same antigen.”  Though my own scientific background was not in immunology (it was in the more general field of three dimensional protein structure determination) I agree with Eli Lilly.  Even given the three dimensional structure of an antigen, no person today can conceive (without actually going into the lab and making one) an antibody that will bind to that antigen.  Furthermore, even once we make one antibody that does bind to an antigen, that alone does not allow for the conception of any other antibodies (much less every antibody) that will also bind to that antigen.

As the Federal Circuit determined, Centocor’s “application only provides amino acid sequence information … for a single mouse variable region.”  Slip Op. at 14.  That meager though still useful (see http://en.wikipedia.org/wiki/Infliximab) disclosure pales in comparison to the broad genus of variable regions that were claimed.  Asserted claims 2 and 3 covered any antibody with a human constant region and a human variable region that binds and neutralizes TNFα in a similar location as the deposited antibody.  There is nothing in the specification that evidences conception of any other variable regions beyond the one deposited variable region.  That disparity between the solutions disclosed versus the solutions claimed is why I viewed this case as being nearly identical to the over-reaching patentees in The Incandescent Lamp case, 159 U.S. 465 (1895).  Where a solution to a technical problem is found through trial and error (even sophisticated, elegant trial and error like for antibodies) without further discovering how to extrapolate to other solutions from the one found solution, then claims cannot exceed that one particular solution.  See id. at 472.  As a result I argued that the asserted claims are invalid under § 112 because they claim variable regions (whether humanized or not) that Centocor certainly did not invent or disclose.

From a policy perspective some might worry that this will provide incredibly narrow and worthless claims in a rapidly growing and important field.  I am not so sure.  It will certainly allow others to produce their own antibodies to the same antigen as the other antibodies will likely differ in actual variable region structure.  The narrow claims still prevent outright piracy and copying of your particular antibody but they also leave room for competition.  With tens of thousands of dollars a year for treatment for these drugs, a little fair competition doesn’t sound bad.  Lastly, the big question is the ability for generic biologic producers to piggy back on the testing data for the initial biologic.  I don’t see a problem from narrow claim scope in this regard either.  Though it depends on the details of the generic approval process for biologics, roughly speaking I wouldn’t want safety and efficacy data from one antibody to be used to confirm the safety and efficacy of structurally different antibodies even if they bind to the same antigen.

When § 112 and its usage of ‘the invention’ is rightfully tied to the subject matter actually invented (i.e. conceived and disclosed), then the shortcomings of the antibody exception become quite apparent.  In fact, when viewed in that light (which I think is the only way to interpret the statute) I cannot fathom a scenario by which the PTO could have possibly drafted the antibody related written description guidelines that have led to the antibody exception.

THE INVENTION AS THE EMBODIMENTS CONCEIVED AND DISCLOSED
But therein lies the problem: not everyone in patent law thinks about the statutory appearances of the invention in § 102, § 112, and more importantly § 271, as tied to the subject matter actually invented (i.e. conceived and disclosed).  For some the invention is just a short-hand reference for whatever subject matter the applicant claims because “the claims … define the invention….”  Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004).  The difference between these two views is critically important yet patent law has never confronted this confusion directly.  In fact, ask yourself, how do you conceptually and practically define the ‘invention’ in 35 U.S.C.?  I think some of our most pressing debates are fueled by talking past each other.  We are often thinking differently about the invention without actually being aware of the disagreement. 

The fight over the disclosure requirements evidenced in Ariad and Centocor is just one visible battle between these two world views.  Another important flashpoint is claim interpretation.  Just a month ago on Jan. 24 (as noted here on Patently-O) in IP Frontline, Hal Wegner described the ongoing problems with claim interpretation.  Discussing Arlington Indus. v. Bridgeport Fittings he pointed to the “festering sore” in Federal Circuit jurisprudence over the proper conceptual relationship between the claims and the specification.  He noted that “[u]ntil there is a final resolution of this debate there will never be clarity in claim construction at the Federal Circuit.”  That festering sore is another important instance of this broader fight over the proper conceptual relationship between claims, the invention, and the specification.  In a recent article, I further detail this controversy and its proper resolution.  For those interested in that broader discussion see Oskar Liivak, Rescuing the Invention from the Cult of the Claim (http://ssrn.com/abstract=1769270).

I thank Kevin E. Collins and Jason Rantanen for very helpful and insightful comments.

Centocor v. Abbott: Written Description and Antibody Claims

Patent,

By Jason Rantanen

Centocor Ortho Biotech, Inc. v. Abbott Laboratories (Fed. Cir. 2011) Download 10-1144
Panel: Bryson, Clevenger, Prost (author)

Centocor, the holder of Patent No. 7,070,775, which claims fully human antibodies to human necrosis factor α ("TNF-α"), sued Abbott for infringement by the therapeutic antibody Humira®.  A jury rejected Abbott's defenses and awarded Centocor $1.67 billion in damages.  After the district court granted Abbott's JMOL of no willful infringement, but denied JMOL on invalidity, noninfringement and damages, Abbott appealed. 

Later Added Claims Lacked Written Description
On appeal, the CAFC reversed, focusing solely on the issue of written description.  In many ways this is a prototypical written description case.  Centocor's approach to developing a TNF-α antibody involved first identifying a mouse antibody to human TNF-α, then changing the less critical portions of the antibody to make it more human – thus producing a chimeric antibody.  Abbott followed a different path, setting out from the start to develop a fully human antibody, a process that ultimately led to Humira®.  Both Centocor and Abbott obtained patents on their antibodies.

In 2002, after Abbott obtained regulatory approval to market Humira®, Centocor filed claims to fully human antibodies as part of an ongoing continuation of the chimeric antibody patent family. These claims later issued as part of the '775 patent.  In responding to Abbott's argument that the fully human antibody claims lacked adequate written description, Centocor relied on a 1994 CIP in the chain that predated the 1996 filing date of Abbott's patent application.

In its opinion, the CAFC honed in on the lack of disclosure of any human variable regions (the portion of the antibody that binds to TNF-α) in the 1994 CIP.  Examining the "four corners" of the 1994 CIP application, the court concluded that "[t]here is nothing in the specification that conveys to one of skillin the art that Centocor possessed fully-human antibodies or human variable regions that fall within the boundaries of the asserted claims."

"while the patent broadly claims a class of antibodies that contain human variable regions, the specification does not describe a single antibody that satisfies the claim limitations. See Eli Lilly, 119 F.3d at 1566-69. It does not disclose any relevant identifying characteristics for such fully-human antibodies or even a single human variable region. See id. Nor does it disclose any relationship between the human TNF-α protein, the known mouse variable region that satisfies the critical claim limitations, and potential human variable regions that will satisfy the claim limitations."

Slip Op. at 16-17.  Essentially, the claims constituted a wish list of properties for a fully-human, therapeutic TNF-α antibody would possess – but a mere wish or plan for obtaining the invention is not sufficient to satisfy the written description requirement. 

Disclosure of a Protein Does Not Necessarily Suffice to Support Claims to All Associated Antibodies
Centocor also suggested that it satisfied the written description requirement by fully disclosing the human TNF-α protein.   It based that suggestion on the current PTO written description guidelines, together with Noelle v. Lederman, 355 F.3d 1343 (Fed. Cir. 2004).  One example in the PTO guidelines indicates that "'an isolated antibody capable of bding to [protein] X' is adequately described where the specification fully characterizes protein X-even if there are no working or detailed prophetic examples of actual antibodies that bind to protein X."  Slip Op. at 17-18.  In other words, simply disclosing the "lock" is suffient to support a claim to the key fitting into that lock.  This view was reinforced by Noelle, in which the CAFC held that:

"as long as an applicant has disclosed a “ fully characterized antigen,” either by its structure, formula, chemical name, or physical properties, or by depositing the protein in a public depository, the applicant can then claim an antibody by its binding affinity to that described antigen."

Noelle, 355 F.3d at 1349. 

Accepting that while this may be true in some cases, the CAFC rejected its application to the multi-part claims at issue.  "While our precedent suggests that written description for certain antibody claims can be satisfied by disclosing a well-characterized antigen, that reasoning applies to disclosure of newly characterized antigens where creation of the claimed antibodies is routine."  Slip Op. at 19.  Here, the creation of the claimed antibodies – which possessed a number of characteristics beyond their relationship with the antigen – was anything but routine.  "Claiming antibodies with specific properties, e.g., an antibody that binds to human TNF-α with A2 specificity, can result in a claim that does not meet written description even if the human TNF-α protein is disclosed because antibodies with those properties have not been adequately described."  Id. at 20.  As Centocor "failed to support its contention that generating fully-human antibodies with he claimed properties would be straightforward for a person of ordianry skill in the art" at the time, possession of the known antigen did not place it in possession of the claimed antibodies. 

For those who are interested in reading further, PatentDocs has a detailed write-up of the decision.

 

In re Katz (part 2): Indefiniteness of computer processes

Indefinite, Patent, ,

By Jason Rantanen

In re Katz Interactive Call Processing Patent Litigation (Fed. Cir. 2011)
Panel: Newman, Lourie, Bryson (author)

In addition to the discussion of complex patent litigation management procedures, summarized yesterday, In re Katz is also notable for its analysis of the indefiniteness of computer processing-type means plus function elements.

The patents at issue relate to interactive call processing and conferencing systems.  Ten of the selected claims include "means for processing"-type limitations.   For example, claims 96, 98, and 99 of the asserted '863 patent recite a "means for processing at least certain of said answer data signals."  Applying WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339 (Fed. Cir. 1999) and Aristocrat Technologies Australia Pty Ltd v International Game Technology, 521 F.3d 1328 (Fed. Cir. 2008), the district court found the claims indefinite because the specifications disclosed only general purpose processors without disclosing any of the algorithms used to perform the claimed functions.   

The Federal Circuit agreed with the district court's analysis of three claims.  Under Federal Circuit precedent, "a computer-implemented means-plus-function term is limited to the corresponding structure disclosed in the specification and equivalents thereof, and the corresponding structure is the algorithm."  Slip Op. at 18, citing Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005).  "[B]y claiming a processor programmed to perform a specialized function without disclosing the internal structure of that processor in the form of an algorithm, Katz’s claims exhibit the 'overbreadth inherent in open-ended functional claims,' … in violation of the limits Congress placed on means-plus-function claims in section 112, paragraph 6."  Slip Op. at 19 (internal citation omitted).  Thus, claims 21 and 33 of the '551 patent and claim 13 of the '065 patent, which claim a “processing means . . . for receiving customer number data entered by a caller and for storing the customer number data . . . and based on a condition coupling an incoming call to the operator terminal, the processing means visually displaying the customer number data” but do not disclose an algorithm that corresponds to the “based on a condition coupling an incoming call to the operator terminal” function are invalid for indefiniteness.

The CAFC reached the opposite result on the remaining seven claims – not on the ground that the patent disclosed the requisite algorithms, but on the basis that no algorithm was necessary because the claim elements may simply claim a general process computer:

[i]n the seven claims identified above, Katz has not claimed a specific function performed by a special purpose computer, but has simply recited the claimed functions of “processing,” “receiving,” and “storing.” Absent a possible narrower construction of the terms “processing,” “receiving,” and “storing,” discussed below, those functions can be achieved by any general purpose computer without special programming.  As such, it was not necessary to disclose more structure than the general purpose processor that performs those functions. Those seven claims do not run afoul of the rule against purely functional claiming, because the functions of “processing,” “receiving,” and “storing” are coextensive with the structure disclosed, i.e., a general purpose processor.

Slip Op. at 20-21. 

The CAFC also reviewed the district court's grant of summary judgment on other issues of indefiniteness, as well as written description, obviousness, claim construction, and noninfringement, largely affirming.  Of these issues, patent litigators may want to take note of the court's comment that when dealing with written description issues it is permissible for the court to construe claims whose meaning has not been placed in dispute, "as claim construction is inherent in any written description analysis."  Slip Op. at 27.  Using this seemingly innocuous statement, the CAFC rejected Katz's argument that it was denied the opportunity to demonstrate specification support or proffer expert testimony on the written description issue because it "should have been clear to Katz that the construction of the claims was important to the written description analysis." 

Top Twelve Most Read Patently-O Posts over the Past Year

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  1. PatentLawImage078Bilski v. Kappos
  2. Court: Essentially All Gene Patents Are Invalid
  3. Patent Reform Act of 2010: An Overview
  4. Therasense v. Becton Dickinson: Federal Cicuit Grants En Banc Request to Rethink the Law of Inequitable Conduct
  5. Dear Patent Attorney and Patent Agent: Consider Joining the PTO
  6. USPTO Guidelines for Determining Obviousness
  7. Patent Absurdity: The Movie
  8. Federal Circuit Confirms that Patents Must Meet Both the Written Description and Enablement Requirements of Section 112.
  9. PatentLawImage079Bilski, Kenny Rogers and Supreme Court Rule 46 (by Prof Ghosh)
  10. Top-Ten Pending Patent Cases (using Hal Wegner's List)
  11. Bilski Watch: Timing of Supreme Court Decisions (Using Prof Miller's Data)
  12. How should a future patent attorney choose a law school?

See the list from 2009.

Research Corp. v. Microsoft: Section 101 and Process Claims

Inequitable Conduct, Infringement, Patent, Patent Cases 2010, Patentable Subject Matter, Rantanen, , , ,

By Jason Rantanen

There are three articulated exceptions to the scope of patentable subject matter under 35 U.S.C. § 101: laws of nature, physical phenomena, and abstract ideas.  Research Corp. v. Microsoft places a high hurdle in front of challengers who seek to invalidate process patents on the third ground. 

Research Corp. Technologies v. Microsoft Corp. (Fed. Cir. 2010)
Panel: Rader (author), Newman, and Plager

Research Corporation ("RCT") owns several patents relating to digital image halftoning, which is the process of generating electronic display and print images using only a small number of pixel colors (ex.: red, blue and green in the case of color displays) while appearing to present many more colors and shades than were actually used.  Four related patents are relevant to this summary: Nos. 5,111,310, 5,341,228, 5,477,305, and 5,726,772.  The applications for the '310 and '228 patents (a continuation-in-part of the '310 patent) were filed before December 4, 1991; the remaining patents are continuations of the '228 patent and claim priority to the earlier filing dates. 

RCT brought an infringement action against Microsoft based on these patents; in response, Microsoft asserted, and the district court initially concluded, that the patents were unenforceable due to inequitable conduct, invalid and not infringed.  The Federal Circuit reversed that determination in 2008.  Microsoft subsequently sought summary judgment against the '310 and '228 patents on Section 101 patentable subject matter grounds, and asserted that the claims of the '772 patent were not entitled to the earlier priority date, thus rendering them anticipated.  The district court granted Microsoft's motions, and subsequently held that the only remaining claim, claim 29 of the '305 patent, also lacked entitlement to the earlier priority date.  Based on these ruling, the parties stipulated to a dismissal of the suit and RCT appealed.

Section 101 and Process Claims
In reversing the district court's ruling that the '310 and '228 patents failed to satisfy Section 101, the Federal Circuit identified a set of considerations that can be applied when assessing the question of abstractness.  Drawing upon the Supreme Court's precedent in this area, including its recent decision In re Bilski, the opinion first reiterates that there are only three articulated exceptions to subject matter eligibility: "laws of nature, physical phenomena, and abstract ideas." 

Focusing on the category of abstract ideas, the court noted the Supreme Court's admonition in Bilski not to provide a rigid formula or definition for abstractness.  Rather, "the Supreme Court invited this court to develop 'other limiting criteria that further the purpose of the Patent Act and are not inconsistent with its text.'" Slip Op. at 14.  With that guidance, the panel concluded that it perceived nothing abstract in the subject matter of the processes claimed in the '310 and '228 patents.  Specifically, the court observed that:

  • "The invention presents functional and palpable applications in the field of computer technology";
  • Some claims in the patents require physical components;
  • "[I]nventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act"; and
  • The incorporation of algorithms and formulas does not prevent patent eligibility.

Nevertheless, while finding these factors met in the instant case, the panel further noted that its analysis was limited to the context of Section 101, which provides only a coarse filter.  Abstractness challenges can also be brought against specific claims under Section 112 even if the requirements of Section 101 are met.

Comment: The court's discussion of Section 101 suggests that the issue of patentable subject matter should be analyzed with respect to the patent as a whole; in contrast, Section 112 challenges are analyzed on a per-claim basis.

Burden of Proof for Establishing Priority
In addressing the district court's ruling that the asserted claims of the '772 and '305 patents were not entitled to claim priority to the '310 and '228 filing dates, the opinion reinforced the court's prior ruling that the patent holder bears the burden of establishing priority.  As the court held, although a patent challenger has the burden of going forward with invalidating prior art, once it has done so the burden shifts to the patent holder.  Thus, in an instance where the patent holder attempts to defeat the assertion of invalidity by claiming priority to an earlier application, the patent holder bears the burden of proving the entitlement to priority – including that the claims of the earlier patent are supported by the written description of the earlier specification.

Note: The '772 and '305 patents shared the same specification as the earlier '305 and '228 patents.  If the relevant claims had been contained in the '305 or '228 patents, Microsoft would have had the burden of proving lack of written description, as opposed to the burden resting with RCT.  Thus, the fact that the claims were part of a continuation was highly significant with respect to the allocation of the burden.

Comment: A related issue is who bears the burden of proof in the context of claims to a pre-filing conception or reduction to practice date. Although not mandated by the text of the opinion, which specifically refers to the burden to establish "an earlier filing date," the court's analysis could be read to support the conclusion that the patent holder bears the burden of proof in this situation as well.

After dispensing with RCT's challenge to the district court's allocation of burden, the panel proceeded to address the priority claims on the merits.  With respect to the '772 claims, the panel agreed with the district court, concluding that they were unsupported by the prior disclosure.  The panel did reverse on the '305 claim, however, ruling that to satisfy the written description requirement for apparatus claims, the patent need not disclose every method of making the apparatus. 

Hyatt v. Kappos: Federal Circuit Opens Door to Post-BPAI Civil Actions

BPAI, En Banc, Enablement, Patent, Patent Cases 2010, , , , , , , , ,

By Dennis Crouch

Hyatt v. Kappos (Fed. Cir. 2010) (en banc)

Summary: In a 6-2-1 en banc decision, the Federal Circuit has reversed its prior precedent and held that a patent applicant must be allowed to introduce new evidence in a Section 145 civil action filed to challenge a USPTO refusal to grant patent rights and that the issues implicated by the new facts must be considered de novo.

[W]e hold that the only limitations on the admissibility of evidence applicable to a § 145 proceeding are the limitations imposed by the Federal Rules of Evidence and Federal Rules of Civil Procedure. Therefore, we hold that the district court applied the wrong legal standard for the admissibility of evidence in a § 145 proceeding and abused its discretion when it excluded Mr. Hyatt's declaration. . . .

The particular significance of a § 145 civil action is that it affords an applicant the opportunity to introduce new evidence after the close of the administra-tive proceedings—and once an applicant introduces new evidence on an issue, the district court reviews that issue de novo.

However, the Court also wrote that an applicant may still be barred from presenting new "issues" in the civil action and that, when no new evidence is presented, that BPAI findings and rulings should be given deference under the Administrative Procedures Act.

Impact: This decision could be seen as relieving some pressure on applicants to ensure that their cases for patentability are exhaustively presented to the USPTO's internal Board of Patent Appeals and Interferences (BPAI). The decision is especially important in light of the growing role of BPAI appeals in the ordinary course of patent prosecution. In its argument, the USPTO suggests that a strategic applicant may now choose hold-back some evidence from the BPAI appeal in order to overcome the APA deference if the case goes to the District Court.

Statute in Question: 35 U.S.C. § 145 creates a right to a "civil action" in Federal District Court against the USPTO Director whenever an applicant is "dissatisfied with the decision of the Board of Patent Appeals and Interferences in an appeal under section 134(a)." In the alternative, an applicant may appeal directly to the Court of Appeals for the Federal Circuit.

Background: Gil Hyatt is a well-known inventor and successful patentee. Hyatt filed a civil action in 2003 after the BPAI sustained written description and enablement rejections for seventy-nine of Hyatt's claims. The examiner had issued "2546 separate rejections of Mr. Hyatt's 117 claims" based on the doctrines of inadequate "written description, lack of enablement, double patenting, anticipation, and obviousness." The Board reversed all of the examiner rejections except for the § 112 p1 arguments. Complicating this case is the fact that the application's claimed priority date is 1975. Hyatt has aggressively pushed the bounds of USPTO practice. This decision is one of more than a dozen Federal Circuit decisions focusing on Hyatt's patent rights. When California pursued Hyatt for tax revenue for his patent licenses, Hyatt took the case to the Supreme Court and eventually won a $388 million judgment against the state of California for invasion of privacy.

After the Board affirmed a set of written description and enablement rejections, Hyatt filed a Section 145 civil action and included a declaration offering new evidence of enablement and written description. The district court excluded that inventor-declaration from evidence based on Hyatt's "negligence" in failing to previously submit the information to the PTO. In a 2009 panel decision, the Federal Circuit held that the district court had properly excluded the new evidence – holding that the district court may properly exclude evidence that Hyatt should have produced to the PTO. That opinion was penned by former Chief Judge Michel and Joined by Judge Dyk. Judge Moore wrote a vigorous dissent that supported a patent applicant's right to a full civil action including the right to submit additional evidence when challenging a PTO decision.

Judge Moore wrote the en banc decision that was joined by Chief Judge Rader and Judges Lourie, Bryson, Linn, and Prost. Judge Dyk dissented and was joined by Judge Gajarsa. Judge Newman Concurred-in-Part – arguing that the civil action should not give deference to PTO factual determinations.

A key to the majority decision is the notion that a Section 145 civil action is not an appeal, but rather a new, separate lawsuit filed to force the PTO to act. In its analysis, the court began with a focus on the 150-year history of the civil action right (and its predecessor Bill in Equity) and the reality that new evidence has always a part of those remedies. See, e.g., Gandy v. Marble, 122 U.S. 432 (1887) (explaining that the [predecessor] § 4915 suit in equity was "not a technical appeal from the Patent Office, nor confined to the case as made in the record on that office"). The court then reviewed the current text of the statute, implications of the APA, and various policy arguments before reaching its conclusions.

In a 37-page dissent, Judge Dyk argued that the majority made an improper leap from (1) the correct premise that new evidence should be admissible in the civil action to (2) the incorrect conclusion that the law provides no meaningful limits on the introduction of new evidence regardless of what was presented at the BPAI.

Notes:

Written Description, Claim Scope, and Showing Possession of Hidden Embodiments

Enablement, Patent, Patent Cases 2010,

PatentLawImage001Laryngeal Mask Co. v. Ambu AS (Fed. Cir. 2010)

The district court rejected LMA’s patent on summary judgment — holding that the claims covering a laryngeal mask device were invalid for lack of written description.

The written description issues here are similar to those presented in Liebel-Flarsheim and Lizard Tech.  The patented invention included both (1) a “cuff” with a “thicker and stiffer” region and (2) a “backplate.”  The described embodiments all showed the thick-stiff region of the cuff connected to the backplate,  but the accused device’s cuff-backplate connection was in a different location. The claims themselves did not expressly limit the connection-site with reference to the thick-stiff region and therefore arguably covered the accused device.  Given that broad construction of the claims (as requested by the patentee), the district court held the patent invalid on written description grounds because the patent document failed to describe or show possession of the invention as embodied by the accused device.

On appeal, the Federal Circuit panel of Chief Judge Rader, Judge Lourie, and Judge Moore rejected the district court’s findings — holding instead that the factual question of written description should be left for the jury in this case. 

Rather than focusing on affirmative evidence of possession, the Federal Circuit highlighted that nothing in the specification suggested that that design of the connection between the cuff and backplate was important or necessary to the invention.

“We agree with LMA that one of ordinary skill in the art could read these disclosures as providing for a cuff reinforcement in the distal region that need not be connected to the backplate. In addition, we agree with LMA that one of ordinary skill in the art could read the Cuff Wall Thickening Passage as disclosing a thickened cuff portion that need not be connected to the backplate.”

Because those factual conclusions raised issues of material fact, the appellate panel reversed the summary judgment holding and remanded.

The Court’s approach implicitly presumes that the asserted patent satisfies the written description requirement and then looks to see whether the evidence is sufficient to overcome that presumption. That method of analysis makes sense based on the procedural setup of the case: Namely, (1) clear and convincing evidence is required to prove that the patent lacks written description; (2) the decision being reviewed was one of summary judgment; and (3) written description is a question of fact.

Notes:

  • The court also reversed a claim construction holding that had led to summary judgment of non-infringement.
  • The asserted claims were all added during prosecution. The original claims required that the backplate be “hermetically bonded to a periphery of the main-cuff” and the new claims have a seemingly broader requirement that the backplate be “attached” to the cuff.  The original claim appears broad enough to cover the link as embodied in the accused device.

 

 

Written Description: Description Must do more than Allow PHOSITA to “Envision” the Claimed Invention

Biotech, Enablement, Interference, Patent, Patent Cases 2010,

Goeddel v. Sugano (Fed. Cir. 2010)

When two inventors both claim rights to a single invention, the USPTO is charged with awarding rights to the “first applicant to conceive the invention, provided that [inter alia,] the invention is duly reduced to practice, actually or constructively.” A foreign-filed patent application can constitute constructive reduction to practice “provided that the requirements of §112 are met.”

Sugano filed its original human fibroblast interferon (hFIF) patent applications in Japan in 1979 and 1980 but did not file the claims for the US continuation-at-issue until the 1990s. Meanwhile, Goeddel filed its application in June 1989. In the interference, Goeddel argued that Sugano’s original filings did not provide sufficient disclosure to satisfy the written description requirement of 35 U.S.C. §112 (with respect to the claims being litigated in the interference).

The BPAI (Board) held that Sugano’s 1980 Japanese Application constituted constructive reduction-to-practice of the claims. On appeal, however, the Federal Circuit has reversed – holding that the disputed claims failed the written description test because claimed DNA sequence used to create an hFIF amino-acid sequence was not explicitly defined by the original application.

The Board erred in ruling that priority is established if a person of skill in the art could “envision” the invention of the counts. Sugano argues that this ruling is supported by Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002) and University of Rochester v. G.D. Searle & Co., 358 F.3d 916, 923 (Fed. Cir. 2004), but these cases do not hold that envisioning an invention not yet made is a constructive reduction to practice of that invention. In Enzo Biochem the court confirmed that depositing an actual sample may meet the written description requirement when science is not capable of a complete written description. Enzo Biochem, 323 F.3d at 970. In University of Rochester the court held that the description of the COX-2 enzyme did not also serve to describe all unknown compounds capable of inhibiting the enzyme. University of Rochester, 358 F.3d at 926-27. Precedent in evolving science is attuned to the state of the science, but remains bound by the requirement of showing “that the inventor actually invented the invention claimed.” Bradford, 603 F.3d at 1269; see Fiers v. Revel, 984 F.2d 1164, 1170 (Fed. Cir. 1993).

Sugano had argued that the specific DNA sequence coding for the amino acids was not necessary because a person of skill in the art could have identified the sequence and therefore, it was “unnecessary to spell out every detail of the invention in the specification.” The appellate panel rejected that argument – holding that the DNA itself should have been identified since the DNA sequence was claimed.

Notes:

  • Genentech owns Goeddel’s rights while the Japanese Foundation for Cancer Research owns Sugano’s rights. (Schering is a licensee).

Law Review Case Note Topics for 2010-2011

Academic Studies, Articles and Publications, Law School, Patent, , , , , , , ,

Dear Law Review Editors: Please send me a note (dcrouch@patentlyo.com) to let me know about patent law focused articles that you publish in your journal so that I can highlight them on Patently-O.

Student Note Topics: Here are some suggestions for patent law focused law review topics for 2010-11 that I would like to see for my own edification. Please send me an e-mail if you choose one of these.

Tags:

Federal Circuit Extends the Scope of 102(e) “Secret Prior Art”

Patent, Patent Applications, Patent Cases 2010, Prior Art, ,

In an important case, the Federal Circuit has expanded the scope of so-called 102(e) “secret prior art.” Under the decision, a US patent or published application will be considered prior art as of the filing date of its qualifying provisional application.  The case is important because of the large number of provisional patent applications being filed each year.

* * * * *

In re Giacomini (Fed. Cir. 2010)

Giacomini’s patent application was filed on November 29, 2000.  In his search, the examiner found U.S. patent 7,039,683 (the “Tran patent”) and asserted that patent as prior art over Giacomini.  The Tran patent application was filed in December 2000 (after Giacomini) and issued in 2006. However, the USPTO asserted that the patent should be considered 102(e) prior art because it claims priority to a U.S. provisional application that was filed in September 2000.

35 U.S.C. 102(e)(2) bars patentability if

the invention was described in . . . a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed . . . shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of [the PCT] in the English language.

The question in this case is whether the 102(e) priority date for prior art reaches-back to the filing date of the provisional application. On appeal, the Federal Circuit agreed with the USPTO that the provisional filing date is the 102(e) priority date.

In the 1968 case of In re Klesper, the Federal Circuit predecessor court (the CCPA) held that the 102(e) follows the prior precedent of treating a prior art disclosure found in an issued patent as being disclosed as of the “filing date of the earliest U.S. application to which the patent is entitled, provided the disclosure was contained in substance in the said earliest application.”  The Federal Circuit agreed that this provision applies equally to provisional patent applications “ so long as the provisional application [provides] written description support for the claimed invention . . . in accordance with Section 119(e).”  Giacomini never argued that the provisional failed to describe the invention found in the prior art.

Therefore, the Tran patent “shall have the same effect,” [Citing 119(e)] including a patent-defeating effect, as to the claimed invention as though it was filed on the date of the Tran provisional. Accordingly, Giacomini, who filed his application after Tran filed his provisional application, cannot receive a patent covering the same subject matter under 35 U.S.C. § 102(e).

This decision follows the BPAI’s 2008 precedential of Ex parte Yamaguchi, 61 U.S.P.Q.2d 1043 (BPAI 2008). However, the decision is in tension with the Hilmer doctrine. In re Hilmer, 359 F.2d 859 (CCPA 1966) (a U.S. application’s 102(e) priority date does not extend to its Section 119 foreign filing date). Giacomini had argued that provisional applications should be treated like foreign filings rather than like non-provisionals because the priority statute for provisional applications is also found in Section 119 and becaues provisional applications lack the formality of non-provisionals. 

Note: US Court interpretations of 103(a)/102(e) offer a major difference between US practice and European practice. Namely, in the US secret 102(e) prior art is available to be combined as part of an argument for obviousness while in most European countries, the filing date of prior art is only important for novelty purposes.

Federal Circuit Splits on Validity of Means Plus Function Claim

CAFC, Claim Construction, Means Plus Function, Patent, Patent Cases 2010,

Telcordia Technologies, Inc. v. Cisco Systems pic-100.jpg (Fed. Cir. 2010)

Chief Judge Rader and Judge Prost sparred over the level of explanation necessary to ensure that a means plus function (MPF) claim is found definite. The Patent Act (35 U.S.C. 112 p6) permits claim limitations written as a "means or step for performing a specified function." The statute provides that an MPF "claim [limitation] shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." However, the claim will be found indefinite and therefore invalid if the specification fails to include at least some structure that is clearly linked or associated with the claimed function. “The question is not whether one of skill in the art would be capable of implementing a structure to perform the function, but whether that person would understand the written description itself to disclose such a structure.” (Quoting Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008)).

Telcordia's patent in this case is directed to a double-ring network that is designed to withstand either a line-cut or a failed node. One element of the claim requires a "monitoring means, associated with the first ring and the second ring, for evaluating the integrity of the multiplexed subrate communications on the first ring and the second ring."

Writing for the majority, Chief Judge Rader (joined by Judge Lourie) held that the claimed "monitoring means" had been properly described in the specification. The dissent cited the same precedent but could not find anything in the specification that links disclosed structures to the claimed function. In discussing the opinion, Foley's Hal Wegner described the opinion as "pitting the leader of the older generation [of Federal Circuit Judges] against a contender from the next generation."

Stats: About 15% of newly issued patent included at least one claim having an MPF limitation. And, of those patents that include an MPF limitation, about half recite fewer than five such limitations. It appears that attorneys are using MPF claim language primarily as a back-up. Longer claim-sets are more likely to include means-plus function language. Thus 21% of patents with above-average-sized claimsets (by character count) include a means-plus-function limitation while only 11% of patents with below-average-sized claimsets include an MPF limitation. Looking claim-by-claim, I found that only 3% of the recently issued patents include means-plus-function limitations in every independent claim. Patents with MPF terms are more frequently associated with non-assigned patents (usually individual inventors). Patents arising from certain countries are much more likely to include MPF limitations. The chart below looks at the most common foreign filing jurisdiction for priority claims and reports the percentage of US patents arising from those foreign filings that include MPF limitations. [More Data]

 

Osenga: The PTOs Fast Track Takes Us in the Wrong Direction

Patent, ,

Professor Kristen Osenga (Richmond) has written a new essay for the Patently-O Patent Law Journal entitled The Patent Office’s Fast Track Will Not Take Us in the Right Direction, 2010 Patently-O Patent L.J. 89. In a 2005 article, Professor Osenga proposed a multi-tiered approach to patent examination. In her Patently-O essay, Professor Osenga explains why her suggestions are “better than the system proposed by the Patent Office.”

  • Download the Patently-O Patent Law Journal Essay: [File Attachment: Osenga.pdf (32 KB)].
  • Read Osenga’s 2005 Article titled Entrance Ramps, Tolls, and Express Lanes – Proposals for Decreasing Traffic Congestion in the Patent Office [Link].
  • On his blog “Inventive Step”, Patent Attorney Matt Osenga (Prof Osenga’s husband) provides further discussion. [Link]

Other Recent Patently-O Patent Law Journal publications:

Patently-O Bits and Bytes

Patent, , ,
  • Trademark / Antitrust: The Supreme Court has ruled against the National Football League (NFL) in an antitrust suit involving the NFL’s exclusive apparel licensing deal with Reebok/Adidas. The court held that the NFL was not a single business entity, but rather 32 separate business entities. Any antitrust violation involves an underlying market. Here, the supreme court identified that as the market for intellectual property: “Directly relevant here, the teams are potentially competing suppliers in the market for intellectual property. When teams license such property, they are not pursuing the common interests of the whole league, but, instead, the interests of each corporation itself.” In Princo, the Federal Circuit is now considering antitrust issues in the scope of patents and standard-setting organizations. [Read NFL v. American Needle] [Read about Princo v. ITC]
  • The Chisum Patent Academy is offering its second annual Intensive Patent Law Training Workshop in Seattle on July 29-31, 2010. See http://www.chisum-patent-academy.com. The workshop will focus on substantive patent law (patentability and enforcement) through analysis of critical Federal Circuit and Supreme Court decisions. [Syllabus for 2009 workshop]. New material for 2010 likely include business method patentability post-Bilski, written description requirement compliance post-Ariad, and the evolving landscape of inequitable conduct as reflected by the Federal Circuit’s recent grant of rehearing en banc in Therasense. The workshop is team-taught in seminar style (maximum of 10 students) by Donald Chisum, author of the treatise Chisum on Patents, and Professor Janice Mueller, author of Patent Law, 3d Edition (Aspen 2009). Chisum and Mueller have a combined total of over 40 years experience teaching patent law. The workshop’s coverage is geared for junior patent attorneys, summer associates, engineers, scientists, paralegals, information specialists, and attorneys experienced in non-patent fields who desire an intensive introduction to patent law. Eighteen hours of CLE credit have been applied for.
  • USPTO News:
    • The USPTO is further developing its patent prosecution highway and has eliminated the associated fee. [Link]
    • USPTO is on Facebook [Link][Me on Facebook]
    • Green Technology: The USPTO has expanded the number of technology classes that count as “green technology” and that are therefore eligible for expedited processing. [Link]

Kathy Bates on NBC as a former patent attorney. Best quote of the clip is 30–seconds-in.

 

 

Patently-O Bits and Bytes

Patent, , ,
  • Trademark / Antitrust: The Supreme Court has ruled against the National Football League (NFL) in an antitrust suit involving the NFL’s exclusive apparel licensing deal with Reebok/Adidas. The court held that the NFL was not a single business entity, but rather 32 separate business entities. Any antitrust violation involves an underlying market. Here, the supreme court identified that as the market for intellectual property: “Directly relevant here, the teams are potentially competing suppliers in the market for intellectual property. When teams license such property, they are not pursuing the common interests of the whole league, but, instead, the interests of each corporation itself.” In Princo, the Federal Circuit is now considering antitrust issues in the scope of patents and standard-setting organizations. [Read NFL v. American Needle] [Read about Princo v. ITC]
  • The Chisum Patent Academy is offering its second annual Intensive Patent Law Training Workshop in Seattle on July 29-31, 2010. See http://www.chisum-patent-academy.com. The workshop will focus on substantive patent law (patentability and enforcement) through analysis of critical Federal Circuit and Supreme Court decisions. [Syllabus for 2009 workshop]. New material for 2010 likely include business method patentability post-Bilski, written description requirement compliance post-Ariad, and the evolving landscape of inequitable conduct as reflected by the Federal Circuit’s recent grant of rehearing en banc in Therasense. The workshop is team-taught in seminar style (maximum of 10 students) by Donald Chisum, author of the treatise Chisum on Patents, and Professor Janice Mueller, author of Patent Law, 3d Edition (Aspen 2009). Chisum and Mueller have a combined total of over 40 years experience teaching patent law. The workshop’s coverage is geared for junior patent attorneys, summer associates, engineers, scientists, paralegals, information specialists, and attorneys experienced in non-patent fields who desire an intensive introduction to patent law. Eighteen hours of CLE credit have been applied for.
  • USPTO News:
    • The USPTO is further developing its patent prosecution highway and has eliminated the associated fee. [Link]
    • USPTO is on Facebook [Link][Me on Facebook]
    • Green Technology: The USPTO has expanded the number of technology classes that count as “green technology” and that are therefore eligible for expedited processing. [Link]

Kathy Bates on NBC as a former patent attorney. Best quote of the clip is 30–seconds-in.

 

 

Donald Chisum: Ariad (2010) and the Overlooked Invention Priority Principle

Patent, , ,

In a new essay for the Patently-O Patent Law Journal, Donald Chisum considers the "invention priority principle" and its role in the written description analysis. 

There may be a solution: application of an established patent law priority principle. The principle focuses on a specific embodiment of a generically claimed invention as a constructive reduction to practice, that is, as a completion of the inventive process. Adopting this solution would preserve the written description of the invention's (WDIs) independence and applicability to original claims but would remove WDI as a standard for assessing the scope of a patent claim. WDI would continue to govern whether, at the time an applicant files an application, he or she has completed the inventive process, that is, "possesses" the invention. But only enablement would govern how broadly the applicant is entitled to claim that invention. It may be possible to implement this priority principle interpretation of Ariad without contradicting its clear holdings.

Cite as Donald S. Chisum, Written Description of the Invention: Ariad (2010) and the Overlooked Invention Priority Principle, 2010 Patently-O Patent L.J. 72.

Other Patently-O Patent Law Journal publications: 

Donald Chisum: Ariad (2010) and the Overlooked Invention Priority Principle

Patent, , ,

In a new essay for the Patently-O Patent Law Journal, Donald Chisum considers the "invention priority principle" and its role in the written description analysis. 

There may be a solution: application of an established patent law priority principle. The principle focuses on a specific embodiment of a generically claimed invention as a constructive reduction to practice, that is, as a completion of the inventive process. Adopting this solution would preserve the written description of the invention's (WDIs) independence and applicability to original claims but would remove WDI as a standard for assessing the scope of a patent claim. WDI would continue to govern whether, at the time an applicant files an application, he or she has completed the inventive process, that is, "possesses" the invention. But only enablement would govern how broadly the applicant is entitled to claim that invention. It may be possible to implement this priority principle interpretation of Ariad without contradicting its clear holdings.

Cite as Donald S. Chisum, Written Description of the Invention: Ariad (2010) and the Overlooked Invention Priority Principle, 2010 Patently-O Patent L.J. 72.

Other Patently-O Patent Law Journal publications: 

Donald Chisum: Ariad (2010) and the Overlooked Invention Priority Principle

Journal,

In a new essay for the Patently-O Patent Law Journal, Donald Chisum considers the "invention priority principle" and its role in the written description analysis. 

There may be a solution: application of an established patent law priority principle. The principle focuses on a specific embodiment of a generically claimed invention as a constructive reduction to practice, that is, as a completion of the inventive process. Adopting this solution would preserve the written description of the invention's (WDIs) independence and applicability to original claims but would remove WDI as a standard for assessing the scope of a patent claim. WDI would continue to govern whether, at the time an applicant files an application, he or she has completed the inventive process, that is, "possesses" the invention. But only enablement would govern how broadly the applicant is entitled to claim that invention. It may be possible to implement this priority principle interpretation of Ariad without contradicting its clear holdings.

Cite as Donald S. Chisum, Written Description of the Invention: Ariad (2010) and the Overlooked Invention Priority Principle, 2010 Patently‐O Patent L.J. 72.

Policing Priority: Nintendo Escapes Liability Based on Patentee’s Failure to Satisfy the Written Description Requirement

Patent,

PatentLawPic968Anascape v. Nintendo (Fed. Cir. 2010)

A jury found that the Nintendo Wii and GameCube infringe Anascape’s U.S. patent No. 6,906,700.  The ‘700 patent claims priority to a parent application and, as it turns out, needed that priority to avoid intervening prior art.  On appeal, the Federal Circuit found the asserted claims invalid — holding that parent application could not serve as a priority document because it did not describe the invention as claimed in the ‘700 patent.

In my recent article on antedating prior art, I suggest that the prevalent practice of quickly filing provisional and other patent applications has largely supplanted patentee’s need to prove a prior invention date.  In order to claim priority to an earlier-filed patent document, that document “must meet the requirements of 35 U.S.C. 112 p1, as to that claimed subject matter.”  These requirements include enablement, written description, and best mode.

Here, the focus was on whether the priority disclosure satisfied written description requirement for the newly added claims of the ‘700 patent. Anascape’s specific problem was that the priority document identified a single “input member” that could measure movement along six degrees of freedom while the ‘700 patent claims were directed toward a controller with multiple input members that each measured fewer than six degrees of freedom.

Written Description of the Invention: The ‘700 patent’s priority document discussed prior art game controllers that were operable with fewer than six-degrees of freedom.  In its analysis, the Federal Circuit refused to consider that disclosure as applicable to the written description requirement because that disclosure “is not a description of the [claimed] invention; [rather,] it is a description of prior art joysticks as generally used in video games.”

Writing in Concurrence, Judge Gajarsa writes that this particular use of the written description requirement is “best” and preferred use of the doctrine. Namely, written description should primarily be primarily used to police priority and new matter issues and other questions of inadequate disclosure should be handled by enablement.  In my recent study of the written description requirement, I found that the USPTO is largely following Judge Gajarsa’s guidance in asserting written description rejections primarily to police priority and new matter issues.

Notes:

  • This decision appears to eliminate what was likely a $100 million total payout for Anascape.  The decision also eliminates the permanent injunction that had been stayed pending appeal.
  • Anascape appears to be primarily owned by the inventor of the ‘700 patent, Brad Armstrong. Armstrong prosecuted the applications himself. Armstrong has several continuations pending. In addition, Anascape appears to have a still-pending (but stayed) litigation against Nintendo based on several more patents that are currently undergoing reexamination.
  • Microsoft was originally a defendant in this case, but settled in a confidential agreement.

Guest Essay: An Initial Comment on Ariad: Written Description and the Baseline of Patent Protection for After-Arising Technology

Patent,

Following on the heels of the Federal Circuit en banc opinion in Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., Professor Kevin Collins asks "What next?"  

Before Ariad, the uncertainty channeled much of the scholarly conversation about the written description doctrine into a binary debate, pitting those who it applied to original claims versus those who believed that it did not. After Ariad, the stage is now set for greater participation in more nuanced conversations about the role that the written description requirement does and should play in curtailing patent protection. Ariad may end one facet of the debate over written description, but it would be a lost opportunity if Ariad were interpreted to end the debate over written description more broadly and cut off these more nuanced conversations.

In this short essay, Professor Collins suggests that patent law scholarship should adopt a "trans-doctrinal approach" directed to the broader purposes and limitations of patent law rather than being confined to doctrinal silos.  The essay indicates that this holistic approach may also be helpful in explaining a perception that patent law varies greatly according to the area of technology. [Download Collins.Ariad]

Read: Kevin Collins, An Initial Comment on Ariad: Written Description and the Baseline of Patent Protection for After-Arising Technology, 2010 Patently-O Patent L.J. 24.