MVS Filewrapper® Blog: Means-Plus-Function Claims and Written Description for Priority

In EnOcean GMBH v. Face International Corp., the Federal Circuit vacated and remanded a final order of the U.S. Patent and Trademark Office (“PTO”) and the Board of Patent Appeals and Interferences (“Board”) with respect to EnOcean’s U.S. Patent Application No. 10/304,121.   The Federal Circuit held (1) the term “receiver” was recited with sufficient structure as to not invoke the means-plus-function requirements of 35 U.S.C. § 112, ¶ 6, and (2) the related German and PCT Applications recited a “receiver” such that one of ordinary skill in the art would understand the bounds of the invention as to allow the U.S. Application to claim the benefit of the German and PCT applications’ priority dates.

On June 25, 2010, the Board declared an interference between EnOcean and Face International—the real party of interest in U.S. Patent No. 7,084,529, directed at similar self-powered switches to those claimed in the EnOcean application.  After finding the claims of the ’529 Patent unpatentable under 35 U.S.C. § 103, the Board applied the presumption that the claims in EnOcean’s Application were also unpatentable.  EnOcean argued that the claims of its Application should be entitled to the filing date of its related German and PCT applications, which would antedate the cited art.  The Board held the claims of EnOcean’s Application were means-plus-function claims and were not entitled to the earlier priority date. 

On appeal, the Federal Circuit first examined the claims of EnOcean’s Application which read on “a signal receiver for receiving” and a “a receiver adapted to receiving” (the “receiver claims”).  The Federal Circuit disagreed with the Board’s finding that there is no distinction in meaning between ‘receiver’ and ‘signal receiving means,’” noting that the lack of the word “means” entitles the claims to a presumption that they are not means-plus-function claims and then cited to extensive evidence that one of skill in the art would sufficiently understand the structure defined by the term “receiver.” 

The Court then turned to the question of whether the written description of the German and PCT Applications were drafted with sufficient detail as to conclude that the inventor invented the claimed invention.  The Court decided that one of ordinary skill in the art would understand the bounds of the invention “merely by reading the term ‘receiver’” in the German and PCT Applications.  The Court further held that the Board’s requirement that the German and PCT Applications “expressly describe the structure of the receiver” applied the incorrect standard.

MVS Filewrapper® Blog: Bring on the New Year—What is in Store for IP in 2014?

Happy New Year to all of our FilewrapperÒ followers! We hope 2013 was a productive year and wish you the best in 2014. As the New Year quickly approaches we would like to share with you a few predictions for 2014 for you to look forward to and for which to prepare!

·         Increased opportunities for quasi-litigation under AIA.  Various new mechanisms are available to challenge patents under the America Inventors Act (also referred to as “AIA” or “Patent Reform”) many provisions of which took effect in 2013. New strategies are available to challenge patents at the USPTO instead of challenging in court, providing distinct advantages—and some disadvantages.  Inter Partes Review, Post-Grant Review and transitional programs specific for business method patents are quasi-litigation proceedings which are heard by a panel of USTPO administrative law judges.  Ex Parte Reexamination—which has been available since 1981—also remains to allow a patent challenge to be heard by a patent examiner, requiring little from the challenger other than filing required papers with some evidence of patent invalidity.  The cost for ex-parte reexamination has significantly increased, although it remains a far less expensive option than litigation with the courts.

·         (Finally) an international design patent application is available!  Design patents protect a product’s new, original and ornamental design.  Design patents present a smart option for investment in protecting a product, since they cost significantly less than utility patents and are generally granted at a much faster rate.  In addition to these benefits of filing design patents, changes in international design registration under the Hague Agreement may facilitate more effective international protection for your design inventions.  Effective December 18, 2013 a single international application designating a variety of countries for protection can be filed through the International Bureau of WIPO.  This is beneficially a single international application to be filed at one location, which will ultimately be examined by many different Offices thereafter to provide more prompt and cost effective options for design protection.  Over 60 countries and territories—including the European Union—are members of the Hague Agreement.  However, there are various countries that are excluded from this treaty (e.g. Australia, Canada, China, Mexico, Japan, India, and Brazil), which would require a separate application as has been done in the past for foreign design patents.  Nonetheless, the Hague Agreement provides significant improvements for international design protection.

·         (Some USPTO) Fees Decrease January 1, 2014.  In addition to the new classification of “micro-entity” status for Applicants to receive 75% reduction of some USPTO fees that took effect in 2013, the New Year also brings certain fee reductions.  Notably, Issue Fee payments for granted patents are substantially reduced (from $1,780 to $960 for large entity), along with the removal of publication fees and assignment recordation fees.  Reissue patent, design patent and plant patent issue fees are also decreasing.  In addition, in 2014 certain PCT fees will be eligible for payment under small and micro entity status.

·         The search continues for a test to determine patentable subject matter under §101.  The Supreme Court will hear CLS Bank v. Alice in 2014 after the Federal Circuit’s en banc decision in 2013 found many software patents to be ineligible.  The Supreme Court will again try to define an abstract idea in considering whether claims to a computerized method (using a computer-readable medium and a computer to implement instructions) is patentable subject matter.  Both the Federal Circuit and patentees are still searching for a test under §101 that is “consistent, cohesive, and accessible [to provide] guidance and predictability for patent applicants and examiners, litigants, and the courts.”

·         We may receive further guidance on Claim Indefiniteness.  The Supreme Court is expected to grant certiorari on Nautilus v. Biosig Instruments involving indefiniteness under §112, second paragraph to determine whether claims having multiple reasonable interpretations are too ambiguous and would render a patent unenforceable for lack of written description.

·         Protecting American from “Patent Trolls.”  As previously reported on FilewrapperÒ, there is legislative movement in the House and Senate to limit lawsuits which can be filed by non-practicing entities (NPEs or Patent Trolls).  There seems to be great energy around limiting “frivolous” lawsuits in our court system.  In early 2014, the Senate will consider a companion bill to Senate 1720 ("Patent Transparency and Improvements Act of 2013"), which is said to already have support from the White House.  If legislation passes the Senate, then the House and Senate bills will need to be reconciled before being sent to the President.

·         New Patent Director.  Stay tuned for further administrative changes at the USPTO as the new Director, Michelle Lee, takes office January 13, 2014. The former Google executive has been made deputy director of the USPTO, and in that capacity will take on the duties of acting director.  Lee has issued statements planning to “attack” the backlog of unexamined patents (remains at more than 500,000) and improve patent quality with improved inter partes review.

MVS Filewrapper® Blog: Federal Circuit Confirms Invalidity for Overbroad Written Description

Novozymes v. DuPont Nutrition Biosciences involved patent 7,713,723 directed toward recombinant Bacillus alpha-amylase enzymes engineered to have enhanced acid tolerance and heat tolerance.  The patent owner, Plaintiffs-Appellants Novozymes, sued DuPont for infringement.  DuPont defended on grounds of non-infringement and invalidity and countersued for a declaratory judgment that the '723 patent was invalid for failing to satisfying the enablement and written description requirements of 35 U.S.C. § 112.

Novozymes had identified thirty-three Bacillus alpha-amylase amino acid positions as targets for mutagenesis.  Novozymes filed a patent in 2000 for these variants with enhanced stability, specifying that any of the positions could be altered by deletion, addition, or substitution to create variants with improved stability.  Ultimately, the application included a wide range of potential variants without identifying any of the mutations as being preferred. Instead, it only offered two examples including one for the S239W mutation, which was found to be inoperable.

In 2006, DuPont began work on similar alpha-amylase variants and came up with mutations which overlapped with six of the amino acid positions identified in Novozymes' 2000 application.  This included position 239, but the Novozymes application did not disclose the particular substation used by DuPont, S239Q. DuPont obtained a patent (7,541,026) on the variant in 2009.

           

Shortly thereafter, Novozymes filed a continuation application with claims drawn specifically to variants substituted at position 239, which issued in 2009.  The specification of the continuation was essentially the same as the 2000 application.  The day the patent issued, Novozymes sued DuPont for infringement.

The main issue in this case was whether Novozymes satisfied the written description requirement for the claims at issue.  The Court quoted Ariad, which required that the written description "clearly allow person of ordinary skill in the art to recognize that [the invention] invented what is claimed."  The Court also noted that often in cases where a patent's written description disclosed an invention in terms of a broad genus but the claims were directed toward a specific species, there must be some indication to guide a reader towards preferred possibilities out of the group.

Novozyme cited Union Oil, a Federal Circuit case involving a gasoline composition claimed in terms of various chemical and physical properties instead of describing the individual components.  In that case it was decided that anyone having ordinary skill in the art would have produced a composition with those properties which performed the claimed invention and so the written description showed that the inventors possessed the claimed invention at the time of filing.

In contrast, while Novozyme's specification included a number of possible variants and offered some limitations, it did not point out any particular characteristics which would guide a reader to the claimed variant.  The Court determined that the 2000 application did not disclose any variant that satisfied the claims and the specification failed to show that Novozymes possessed such a variant at the time of filing.  The Court ultimately held that no reasonable jury could find that the claims of the '723 patent met the written description requirement of 35 U.S.C. § 112 and the district court properly invalidated the claims.

Chief Judge Radar dissented, stating that he would reverse the grant of judgment as a matter of law and reinstate the jury's verdict.  He noted that the jury had found that a skilled artisan would know how to arrive at the claimed invention by substituting amino acids.  Their decision was based on expert testimony which suggested that finding the claimed variants based on the specification was routine and would only take a week if you had a team of ten scientists making and testing all nineteen amino acid substitutions at each of the thirty-three amino acid positions.

Given the Federal Circuit's recent decision in Wyeth v. Abbott Laboratories, it seems that providing a large number of options of a genus in a patent description could lead to trouble, even if one with skill in the art could arrive at the claimed invention with routine experimentation.  The specification needs to provide some guidance to narrow down the possibilities and enable the reader to arrive at the claimed species without undue experimentation.

           

Inventor's prior art patents and prosecution history lead to reversal of claim construction

In a recent decision, the Federal Circuit reversed a district court's grant of summary judgment of noninfringement and invalidity based on inadequate written description.  The issue of infringement was reversed based on the district court's incorrect construction of a critical claim limitation.  While the court held it was a "close case," it held the patentee had not acted as his own lexicographer and the specification and file history showed a broader construction was appropriate.  In addition, a broader construction was supported by usage of the term in prior art patents by the same inventor.

On the written description issue, the court held there was at least a factual issue as to whether limitation at issue, which permitted reinforcement of any portion of a portion of the claimed product, was inadequately described.  The court observed that the allegedly limiting language was a "preferred aspect" of the invention, and thus the patentee's experts' testimony that one in the art would interpret the specification as more broadly disclosing the device was sufficient to generate a fact issue.  The district court characterized this testimony as "not helpful" when granting summary judgment of invalidity. 

More detail of Laryngeal Mask Co. v. Ambu A/S after the jump.
 

En banc Federal Circuit reaffirms written description requirement is separate from enablement

Monday the Federal Circuit  released its en banc opinion in Ariad Pharmaceuticals, Inc. v. Eli Lily & Co., where the court addressed whether 35 U.S.C. § 112  has a written description requirement separate and apart from the enablement requirement.  A substantial majority of the court (10 judges) joined in the majority opinion, with two judges dissenting.  As summarized by the court:

We . . . read the statute to give effect to its language that the specification "shall contain a written description of the invention" and hold that § 112, first paragraph, contains two separate description requirements: a "written description [i] of the invention, and [ii] of the manner and process of making and using [the invention]."

The Federal Circuit analyzed several old Supreme Court cases, and concluded that the Supreme Court, while not specifically calling this requirement a "written description" requirement, has consistently held that an inventor must do more than simply enable one in the art to make and use the invention claimed, but also must describe what the invention is. 

This decision is not unexpected, and leaves intact the Federal Circuit's jurisprudence on the subject. In fact, one of the grounds for retaining the requirement is that forty years of case law has held such a requirement exists, and inventors have relied upon the requirement over the course of that time.  The court was reluctant to upset the settled expectations of the patent community.  The court also declined to set forth a rule where original claims always meet the written description requirement, noting:

Although many original claims will satisfy the written description requirement, certain claims may not. For example, a generic claim may define the boundaries of a vast genus of chemical compounds, and yet the question may still remain whether the specification, including original claim language, demonstrates that the applicant has invented species sufficient to support a claim to a genus. The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. 

More detail of the en banc decision after the jump.  Click here for our post regarding the original panel decision, which has much of the factual background of the invention at issue.  Click here for a discussion of court's decision to grant en banc review, including the questions presented.

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Federal Circuit to consider whether a separate written description requirement exists in section 112

In an en banc order Friday, the Federal Circuit announced it will rehear Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. en banc to consider whether there is a written description requirement in § 112 separate and apart from the enablement requirement.  Specifically, the questions presented are:

  1. Whether 35 U.S.C. § 112, paragraph 1, contains a written description requirement separate from an enablement requirement?
  2. If a separate written description requirement is set forth in the statute, what is the scope and purpose of the requirement? 

Our post regarding the panel decision in the case may be found hereJudge Linn filed an opinion concurring in the panel's decision in order to restate his opinion that no such separate written description requirement exists in the statute.  He now has his opportunity to convince his colleagues that there is no such requirement.

To read the order in Ariad Pharms., Inc. v. Eli Lilly & Co., click here.

When analyzing written description in interference, claims construed according to patent copied from

In a recent decision, the Federal Circuit reversed a district court's grant of summary judgment in a § 146 action brought after an interference proceeding at the USPTO.  The district court agreed with the Board's decision to award priority to the senior party in the interference, granting the senior party's motion for summary judgment that its specification satisfied the written description requirement for the interference count.  In coming to this conclusion, the district court construed the count by reference to the specification of the senior party's application, rather than by reference to the specification of the junior party's issued patent.  The district court also determined the proper standard of review was for substantial evidence, holding the junior party did not advance any "meaningful evidence" apart from what was considered by the Board.

The Federal Circuit reversed.  The court determined the district court erred both with regard to its determination that 1) the claims should be construed in light of the host application whose written description was being challenged and 2) that evidence proffered to the district court was insufficient to require de novo determination of the facts under § 146.  The court reconciled two prior decisions, In re Spina and Rowe v. Dror, dealing with the proper source for claim construction in an interference.  As described by the court:

[W]hen a party challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language.  When a party challenges a claim's validity under § 102 or § 103, however, [the Federal Circuit] and the Board must interpret the claim in light of the specification in which it appears.
Applying this law, the court construed the count in light of the proper specification.  In light of the revised construction, the Federal Circuit reversed the district court's grant of summary judgment that the senior party's disclosure met the written description requirement and remanded with instructions to enter summary judgment for the junior party.

More detail of Agilent Techs., Inc. v. Affymetrix, Inc. after the jump.

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Disclosure of compounds without link to claimed method fails to meet written description requirement

In a recent decision, the Federal Circuit reversed a district court's denial of judgment as a matter of law after a jury determined the asserted claims of an invention were not invalid under the written description requirement.  The court, however, affirmed the district court's determination of no inequitable conduct.

The Federal Circuit held the jury lacked substantial evidence for its verdict.  Specifically, the court noted that vague functional descriptions are essentially invitations for skilled artisans to conduct further research and therefore are not sufficient description to meet the written description requirement of § 112.  The specification disclosed three classes of compounds that could be used in the claimed methods.  However, it only disclosed specific examples of one of the classes of compounds, and did not disclose any examples of the described compounds actually linked to use in the claimed method.  The patentee was further hampered in that the jury held the patent was entitled to a priority date of 1989, but most of the patentee's testimony and other evidence regarding the written description issue centered on the application's filing date in 1991.  The court held none of this evidence could support the jury's verdict, as it was directed to the wrong timeframe.  Therefore, the court held the written description requirement not met, and the asserted claims invalid.

The court affirmed the district court's holding of no inequitable conduct.  Neither party contested the relevant acts (failing to correct a figure and to disclose certain non-prior art references that were relevant to patentability) were properly held material.  The Federal Circuit agreed with the district court that there was insufficient evidence of intent to deceive to support a finding of inequitable conduct.

More on Ariad Pharms., Inc. v. Eli Lilly & Co. after the jump.

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Federal Circuit hears arguments in In re Kubin; what will be obvious in biotechnology?

Thursday, the Federal Circuit held oral arguments in In re Kubin, a biotechnology case involving a patent over a gene sequence in humans, and specifically whether the claims were obvious.  This was the first precedential decision by the Board of Patent Appeals and Interferences on the issue of obviousness in this field after KSR, so how the Federal Circuit comes out on the issue has the potential to greatly affect examination of biotechnology applications at the USPTOWe previously covered the Board's decision in the case in July.

The key issues addressed in oral arguments were whether the prior art, particularly Valiente (a reference teaching a similar protein in mice), rendered the claimed invention obvious, and whether the disclosure of essentially one sequence was sufficient to provide written description for all sequences with 80% similarity that still retain the function of the original gene.  Oral argument focused largely on the obviousness issue.  Many attended the arguments, including representatives from our office.

Click below for more detail of the arguments in In re Kubin.

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On appeal, BPAI cannot group claims that do not share a common reason for rejection

In a recent decision, the Federal Circuit affirmed a distirct court's vacatur of a decision of the Board of Patent Appeals and Interferences.  In an appeal of rejections in twelve different applications involving approximately 2,400 claims, the Board only addressed the rejection of 21 "represntative" claims pursuant to 37 C.F.R. § 1.192(c)(7) [now 37 C.F.R. § 41.37(c)(vii)].  The Board took this position that each of the claims in the groupings were rejected under the same statutory provision, even though the rejections were not necessarily based on the same limitations.

The district court held this was improper.  Specifically, the district court held the Board could only group claims if the basis for the rejection was the same, which requires both the same statutory provision and the same underlying basis for the rejection.  Here, because the rejections at issue were predominantly under the written description requirement, the district court held claims could only properly be grouped if the limitation that was allegedly not described was present in each of the grouped claims.

The Federal Circuit affirmed, agreeing with the district court's analysis.

More detail of Hyatt v. Dudas after the jump.

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