Posts Tagged “Written description”

When your patent attorney prepares your patent application he or she is trying to help. But like an inept version of Paladin (Have Gun – Will Travel) sometimes the bullet will end up in your foot.

One of these miss-aimed bullets is the almost catechismal recitation of the weasel words “those having ordinary skill in the art will appreciate that the specific devices and processes described herein are intended as merely illustrative of their more general counterparts” or other similar boilerplate. A similar bullet is the slavish use of “exemplary embodiment” language.

These locutions are intended to arm you to do doctrine-of-equivalents battle against infringers by broadening your claims, but there are times when they can work against you.

In a recent Court of Appeals case, Edward Jung’s patent claim for a circuit that included a “well-charge-level controller” was rejected as being anticipated by an earlier patent. That is, the examiner believed Jung’s claim was broad enough to include the earlier circuit, and so, if allowed, would make the prior art infringing.

Jung, at a late point in the discussion, pointed out that his controller, as described in the specification, was much more complex than the prior art reset controller and, given those complexities, would not turn the prior art circuit into an infringing product. Basically Jung was arguing that he had defined his complex controller in the specification and thus did not have to re-define it in the claim.

And the examiner agreed…up to a point. The examiner, the Board of Appeal, and the Court of Appeals agreed with Jung that a patent on his complex controller would not turn the prior art into an infringing product. But, as the Court of Appeals pointed out:

Jung “had the opportunity to amend the claims to achieve more precise claim coverage, i.e., to limit the claim to the ‘exemplary process’ disclosed in the Specification, but did not do so.” … Because the specification explicitly noted that the examples were merely exemplary and were made only to show how the invention “typically” worked, the Board [properly] determined that the claim language could not be limited to those embodiments. [emphasis added]

The lesson is NOT that you should avoid making clear that your invention is broader than the specific embodiments. The lesson is that your specification should try to describe your invention as separate from its embodiments. The description of the invention should be definitive; its embodiments can be exemplary.

As an aside, you should note that the Jung’s real problem is that he didn’t know when to quit arguing. Long ago a dependent claim that included the complexities of his controller had been allowed but he continued to fight the rejection of his independent claim up to the Court of Appeals for the Federal Circuit.

Comments Comments Off on When Your Attorney Draws a Gun, Watch Out For Your Own Foot

“When I invented the 2-way wrist radio in 1946, I had bought a bundle of laughing stock.”

Unfortunately, Chester Gould didn’t invent the 2-way wrist radio. If he had, he would have bought himself a lot more than derision – he could have garnered significant patent license fees from the likes of Motorola and Casio who, in the 65 years since Gould conceived of the device, have made and sold smaller and smaller radio communication devices.
Of course, Gould didn’t try to get a patent, but many of us do try to get patents on our inventions – or what we believe to be inventions. When we apply for a patent we should remember the difference between having the concept for the invention and having the invention ready for patenting. To “prove”  we have reduced the conception to practice – that we have the invention-  we must include a “written description” in our application and that description must be very detailed and specific. As Johnson and Johnson’s Centocor unit discovered, laying out a research plan for how to get to the finished invention does not support a patent. It was a 1.67 BILLION dollar mistake.
The court of appeals recently overturned J&J’s $1.6B patent infringement win against Abbott Laboratories, saying that J&J’s patent failed to provide, as the law says, “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 make and use the same” [emphasis added]. Instead, it said:
…while the patent broadly claims a class of anti-bodies that contain human variable regions, the specifica-tion does not describe a single antibody that satisfies the claim limitations.
and that “the asserted claims constitute a wish list of properties” that the anti-bodies should have.
More importantly, the court said:
The specification at best describes a plan for making fully-human antibodies and then identifying those that satisfy the claim limitations. But a “mere wish or plan” for obtaining the claimed invention is not sufficient.
The message is that we must know what our invention is when we file a patent application; it is not enough to be able to say it might be this or might comprise that. At some point you must be able to state unequivocally, “my invention is such and such”. Oh, and like J&J you will not be put to the test until you try to asset your patent rights against an infringer – patent examiners don’t usually put a lot of effort into checking this aspect of your application.

Comments Comments Off on A Plan is Not an Invention

In a seeming paradox, in the magic world of patent filings it is possible to “enable” your invention – that is, explain to someone of skill in your field how to make or use your invention – and yet not fully meet the written description requirement for obtaining a patent (or at least patent coverage for all aspects of your invention). Orlando Lopez, a partner at Burns & Levinson, was kind enough to provide an example where this was an issue:

In a 1971 case again involving chemical subject matter, the court expressly stated that “it is possible for a specification to enable the practice of an invention as broadly as it is claimed, and still not describe that invention.” [**15] In re DiLeone, 58 C.C.P.A. 925, 436 F.2d 1404, 1405, 168 U.S.P.Q. (BNA) 592, 593 (1971). As an example, the court posited the situation “where the specification discusses only compound A and contains no broadening language of any kind. This might very well enable one skilled in the art to make and use compounds B and C; yet the class consisting of A, B and C has not been described.”

Admittedly it is rarely the case, but it certainly shows an internal, logical inconsistancy. It seems to me, in this case, that compounds B and C, being enabled for one skilled in the art, should at least be covered by the doctrine of equivalents, assuming the patent was covering a process for making A.

Similarly, I would expect that a separate patent application for compounds B and C, made by this process, would be tossed out as either anticipated or obvious in light of the patent in this case.

In the same vein, had the enabling description for making compound A in this patent been presented in a journal more than a year before filing, would compounds B and C run into the prior disclosure bar? Seems to me it all needs to hang together.

And it certainly will depend on what the patent specification in question is actually trying to cover. If I come up with a new paint in which oxidized metallic flakes provide some new and beneficial property and enable the process of incorporating the flakes uniformly, but I only describe red paint based on iron (known to look red), should my patent bar someone from using oxidized copper flakes to make green paint? I would think/hope it would!

[This example begs another question – could someone else get a patent on the green paint that I enabled but didn’t describe? Admittedly it would be dominated by my patent, but it would bar me from making green paint.]

Comments Comments Off on Enabled but not described?

Conventional wisdom dictates “Make your claims as broad as possible” but some inventors and their attorneys seem to forget that, broad or narrow, the claims have to define the invention you have, not the invention you wish you had. In a recent case, Liebel-Flarsheim Company overplayed their hand by filing (and getting) overly broad claims, made a losing bet by suing Medrad for infringing, and capped it all off by doubling down with an appeal in which their patent was ruled infringed but invalid.

Liebel’s invention was a fluid injector with a pressure jacket to contain the high pressures involved. At some point in the prosecution of their patent application someone got the bright idea that they could get broader protection by leaving out some of the limitations in their claims (a truth); they removed all references in the claims to the pressure jacket. The patent examiner allowed the claims.

The patent examiner did them no favor. When Liebel sued Medrad, they first lost the claims construction battle (the judge decided that the claims required the pressure jacket) but then won the appeals battle (the CAFC said NO pressure jacket was required). Based on the new claims construction, the district court concluded that Liebel’s patent was infringed (by the jacketless Medrad device) but that the claims were invalid because Liebel had failed to comply with the written description and enablement requirements!

This conclusion was to be expected – Liebel had never successfully made a jacketless system; their engineers testified that the use of a jacket was not a mere design option and that one of skill in the art would not know how to make a jacketless system; the specification described jacketless systems as “impractical“; the inventors had tried unsuccessfully to produce a jacketless system and that it was “too risky” to pursue further.

Yet, in spite of this understanding of the limits of the invention, in spite of having filed all claims with the limitation of a pressure jacket, Liebel and its patent attorney decided to delete these limitations from the claims and get a patent on the invention they wish they had invented.

Although I put most of the blame on Liebel’s patent attorneys, I also blame the patent examiner for allowing claims for which there was little or no support in the specification – no matter how loudly the patent attorneys cried.

Remember, to paraphrase Don Rumsfeld, you have to go to the patent office with the invention you have, not the invention you want.

Comments Comments Off on If You Can’t Build It, Don’t Claim It.