Written Description: What’s Up With That?

1. Written Description: What’s Up With That? Patent Law Sept. 9, 2004 Prof Merges

3. The Written Description Requirement Scope of enablement vs. scope of that which you have “described” Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998). Original Claim Language: 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. The term “console” does not cover a sofa section having a seat back that folds down to serve as a table top. (This was to distinguish Gentry’s sofa from prior art.) The Federal Circuit limits the scope of the claim to cover sofas in which the recliner control is located on the console and invalidates 12 claims in the patent under § 112. The court affirmed that Berkline had not infringed on Gentry’s patent by constructing reclining chairs separated by a center seat whose back cushion pivoted to form a table. Prosecution History: Amended Claim Language:

4. Gentry Gallery, cont’d Canon 1: Claims should be interpreted such that the preferred embodiment falls within their scope. Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998). Original Claim Language: 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. The term “console” does not cover a sofa section having a seat back that folds down to serve as a table top. (This was to distinguish Gentry’s sofa from prior art.) The Federal Circuit limits the scope of the claim to cover sofas in which the recliner control is located on the console and invalidates 12 claims in the patent under § 112. The court affirmed that Berkline had not infringed on Gentry’s patent by constructing reclining chairs separated by a center seat whose back cushion pivoted to form a table. Prosecution History: Amended Claim Language:

5. Patent Specification Enabled subject matter: everything the inventor teaches to one of skill in the art. Enabled Described embodiments of the invention: everything the inventor “adequately describes” to one in the art; everything the inventor shows she is in “possession of” or contemplates as embraced by her invention Specification Described Claim 1 Original Application Claim 2 Claimed in C-I-P or amended application

6. Enabled Claim 2 Described Specification Re-filed If the inventor re-files the specification at a later date, she cannot claim what the first filing enabled but failed to describe. Enabled Described Claim 1 Original Application

7. What’s claimable? Dedicated to the Public Competitor Original Description Competitor Taught by Patent Competitor Claimable by original inventor

8. Gentry Gallery v. Berkline Corp. Enabled: 2 reclining seats in a sectional sofa; controls not located on arms of chair Enabled Specification for Gentry patent Described: pair of reclining seats in a sectional sofa with a fixed console that houses the control means Described Claim 1 Claimed: pair of reclining seats in a sectional sofa, a fixed console, and a pair of controls.

9. In re Curtis, 69 USPQ2d 1274 (CA FC 2004) 69 USPQ2D 1274In re CurtisU.S. Court of Appeals Federal Circuit No. 03-1215Decided January 6, 2004

12. In re Curtis, cont’d • The Board determined that Curtis could not traverse the examiner’s rejections by claiming the benefit of an earlier patent application because the disclosure therein failed to adequately describe the subject matter encompassed by the rejected claims under 35 U.S.C. §112, ¶ 1. Because the Board’s decision is supported by substantial evidence and otherwise is in accordance with law, we affirm.

13. Univ of Rochester v. Searle Univ. of Rochester v. GD Searle & Co., 358 F.3d 916 (Fed. Cir. 2004) – “business as usual” in the application of the written description Requirement

14. Patent for a method of treating inflammation using inhibitors of prostaglandin H synthase-2 (PGHS-2) enzyme activity, also known as “COX-2”

15. 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

16. Swing back to “Enzo I” – very aggressive WD Requirement? • Undercutting Enzo Biochem, Inc. v. Gen-Probe Inc., 296 F.3d 1316 (Fed. Cir. 2002) (“Enzo II”) • Deposited sequences meet written description requirement • Subsequences, mixtures, and mutations that hybridize to deposited sequences may meet WD requirement

17. Rochester v Searle, cont’d • Right result, wrong rationale?

18. Signs of Resistance I • Rader, J., in Moba v. Diamond Automation, 325 F.3d 1306, 1322 (Fed. Cir. 2003): • “By making written description a free-standing disclosure doctrine, this court produces numerous unintended and deleterious consequences.”

19. Signs of Resistance II Follows a similar criticism in Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 976 (Fed. Cir. 2002) (Rader, J., dissenting from denial of rehearing en banc)

20. Signs of Resistance III • University of Rochester v. G.D. Searle & Co., Inc., 375 F.3d 1303, 71 U.S.P.Q.2d 1545 (Fed.Cir.(N.Y.) Jul 02, 2004 “

21. Rader, Gajarsa & Linn, dissenting “Indeed a brief survey of the literature on this topic, an astounding amount in a few short years, shows 31 articles criticizing the Eli Lilly doctrine, 7 articles defending the doctrine, and 16 neutrally commenting on the state of this evolving case law.5  In its brief requesting en banc reconsideration in Enzo Biochem, the United States issued a call for clarity, which this court has yet to address . . .

22. “Although this Court has addressed the “written description” requirement of section 112 on a number of occasions, its decisions have not taken a clear and uniform position regarding the purpose and meaning of the requirement.  . . .  A review of the plain text of section 112, and the case law of this Court, reveals at least three different possible tests for an adequate “written description.”  . . .  En banc consideration of the written description provision is appropriate so that the court can provide inventors, the public, and the USPTO with an authoritative interpretation of the provision. 

23. Who is Judge Rader’s Audience? • The Supreme Court? • Signs of re-engagement with patent law, 1995 (Markman) -2003 (Festo) • But of course, only a limited patent diet • Disappointment over Madey v. Duke Univ.

24. A Normative Interlude • What’s wrong with the Written Description requirement? • Diversion of R&D resources . . .

25. Enabled: described or discoverable without undue experimentation “Described” in specificaction

26. What is the value of the enabled but described embodi-ments? What is the cost of “fleshing out” the disclosure?

27. Shouldn’t we be encouraging the inventor to invest in the next significant (nonobvious) invention? Rather than fleshing out all the obvious variants of the last invention?

28. Bring Back “Classical Enablement”! • In re Fisher, 427 F.2d 833 (CCPA 1970) • “specification [must be] . . . Commensurate with the scope of the claims” • National Recovery Technologies, Inc. v. Magnetic Separation Systems, Inc., 166 F.3d 1190 (Fed Cir 1999): • “The scope of the claims must be less than or equal to the scope of the enablement.”