Written Description II

1. Written Description II Prof Merges Feb. 4, 2008

2. The Written Description Requirement Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998). Gentry was granted a patent for a sectional sofa comprised of a pair of reclining seats that faced the same direction. Claim 1, the broadest claim, identifies a “fixed console” between the pair of seats. Claims 9, 10, 12-15, and 19-21 are directed to a sectional sofa in which the control means are specifically located on the console. Gentry’s Patent:

3. US Pat. No. 5,064,244

4. Claim 1 A sectional sofa comprising: a pair of reclining seats disposed in parallel relationship with one another in a double reclining seat sectional sofa section being without an arm at one end . . . , each of said reclining seats having a backrest and seat cushions and movable between upright and reclined positions . . . ,

5. a fixed console disposed in the double reclining seat sofa section between the pair of reclining seats and with the console and reclining seats together comprising a unitary structure, said console including an armrest portion for each of the reclining seats; said arm rests remaining fixed when the reclining seats move from one to another of their positions,

6. Claim 1 (cont’d) and a pair of control means, one for each reclining seat; mounted on the double reclining seat sofa section . . . .

7. Casebook p. 305 “In this case, the original disclosure clearly identifies the console as the only possible location for the controls. It provides for only the most minor variation in the location of the controls, noting that the control “may be mounted on top or side surfaces of the console rather than on the front wall . . . Without departing from this invention.”

8. “[T]he only discernible purpose for the console is to house the controls. As the disclosure states, identifying the only purpose relevant to the console, “[a]nother object of the present invention is to provide . . . a console positioned between [the reclining seats] that accommodates the controls for both of the reclining seats.”

9. Casebook, p. 306 Thus, locating the controls anywhere but on the console is outside the stated purpose of the invention.

10. P. 306 “[A]lthough not dispositive, because one can add claims to a pending application directed to adequately described subject matter, Sproule [the inventor] admitted at trial that he did not consider placing the controls outside the console until he became aware that some of Gentry’s competitors were so locating the recliner controls.”

11. Univ of Rochester v. Searle Univ. of Rochester v. GD Searle & Co., 358 F.3d 916 (Fed. Cir. 2004)

12. Traditional non-steroidal anti-inflammatory drugs ("NSAIDs") such as aspirin [and] ibuprofen . . . are believed to function by inhibiting the activity of enzymes called cyclooxygenases. Cyclooxygenases catalyze the production of a molecule called prostaglandin H[2], which is a precursor for other prostaglandins that perform various functions in the human body

13. Patent in suit, owned by University of Rochester, was for a method of treating inflammation using inhibitors of prostaglandin H synthase-2 (PGHS-2) enzyme activity, also known as “COX-2”

15. Claim 1: ‘850 Patent 1. A method for selectively inhibiting PGHS-2 activity in a human host, comprising administering a non-steroidal compound that selectively inhibits activity of the PGHS-2 gene product to a human host in need of such treatment.

16. Claimed method of using a compound acting upon a polypeptide did not comply with the written description requirement where such a compound was not disclosed. • Spec. did not disclose which, if any, compounds selectively inhibit PGHS-2

17. ‘850 Patent Spec “The present invention provides a simple in vitro system for the screening of drug actions on both the constitutive and the inflammatory cyclooxygenase, which will be useful for the development of drugs that selectively inhibit inflammation without producing the side effects due to inhibition of constitutive prostaglandin production.”

18. District court opinion The '850 patent neither discloses any actual Cox-2 inhibiting compound nor provides any suggestion as to how such a compound could be made or otherwise obtained other than by trial-and-error research. Indeed, the court found no evidence in the '850 patent that the inventors themselves knew of any such compound at the time their patent application was filed.

19. Federal Circuit opinion • Enablement and WD – separate requirements • Relationship? – confused!!

20. Bottom line • “Without such disclosure [of specific peptides, etc. selectively inhibit Cox 2] the claimed methods cannot be said to have been described.”

21. Lizardtech v. ERM424 F.2d 1336 (Fed. Cir. 2005) • Data compression technology • Mathematical “transforms” used to convert and compress data, stored as arrays • If the correct transform is chosen, the majority of the information is stored in a relatively small portion of the array.

23. Lizardtech • Once we have chosen DWT as the transform, how do we implement DWT quickly and efficiently?

24. DWT works by splitting the image data using two filters. The low pass filter retains the low frequency data, such as broad areas of color. The high pass filter retains the high frequency data, such as edges and textures.

25. The prior art centers the filter on each element in the tile. The Lizardtech method also centers the filter on elements outside the tile that have been set to 0. This is a means of calculating not only the coefficients for the tile loaded into memory, but also the effect of that tile on later calculated coefficients. In effect, the sums are broken up and calculated in pieces. This results in a seamless transform that is exactly the same as if DWT had been run on the entire, unbroken image.

26. ERM Uses a Continuous Sliding Window Approach: This technique never breaks up or tiles the image. so it does not introduce any edge artifacts. Instead, it relies on the critical observation that contrary to what was previously thought, the DWT process does not need to generate the entire intermediate images before generating the output sub-band images. The newly-patented ERM method uses this observation to perform a standard prior art DWT technique, but does so by structuring the data flow to ensure that only the minimum amount of data required is stored in memory at any one time.

27. The problem is that the specification provides only one method for creating a seamless DWT, which is to "maintain updated sums" of DWT coefficients. That is the procedure recited by claim 1. Yet claim 21 is broader than claim 1 because it lacks the "maintain updated sums" limitation. Thus, a person of ordinary skill in the art would understand that claim 21 is directed to a seamless DWT. But because there are no limitations in claim 21 as to how the seamless DWT is accomplished, claim 21 refers to taking a seamless DWT generically.

28. The trouble with allowing claim 21 to cover all ways of performing DWT-based compression processes that lead to a seamless DWT is that there is no support for such a broad claim in the specification. The specification provides only a single way of creating a seamless DWT, which is by maintaining updated sums of DWT coefficients. There is no evidence that the specification contemplates a more generic way of creating a seamless array of DWT coefficients. . . . P. 324

29. Guardian Industries Corp. v. AFG Industries, Inc.2006 WL 2691387E.D.Mich.,2006. Technology: layer coatings placed on glass which seek to reflect infrared radiation while enabling a high amount of visible light transmittance. Guardian's patent claims to be the "first patent to teach oxidation gradation in the coating layers adjacent to the reflective (e.g.silver) layers on the glass."

30. Guardian The court believes that the Gentry case is distinguishable. The broadest originally filed claim in Gentry required the controls to be on the center console, but later in the prosecution the patentee broadened the claims to cover its competitor's product, i.e. not on the console.

31. Guardian Guardian did not amend its clams to broaden them beyond the scope of what was originally disclosed in the patent application. The original 37-43 claims and 70-78 claims of the '349 parent application do not require the coated article to include a layer of oxidation graded NiCrOx. Thus, this is not the situation where a patentee later broadens his/her claims after the filing of the original application.

32. Guardian These pages expressly convey to one of ordinary skill that the inventors were "in possession" of a coated article comprising a layer of silicon rich silicon nitride that did not require a layer of oxidation graded NiCrOx. – at 9.