LizardTech, UC/Berkeley lose to Earth Resources

The CAFC affirmed summary judgment of noninfringement and invalidity in Lizardtech v. Earth Resources concerning US 5,710,835. The detailed finding was noninfringement as to claims 1 and 13, and invalidity through lack of written description for claim 21 (obviousness holding of district court not reviewed). The '835 patent is assigned to The Regents of the University of California, Office of Technology; this is a Bayh-Dole patent (there are government rights: This invention was made with government support under Contract No. W-7405-ENG-36 awarded by the U.S. Department of Energy), and the '835 has been cited by 37 US patents.

The technology is that of wavelet transforms. Yes, Phillips v. AWH, 415 F.3d 1303 is cited.

At one point, the CAFC notes that "it would be peculiar for the claims to cover prior art that suffers from precisely the same problems that the specification focuses on solving."

See earlier post on IPBiz on September 24, 2004.

As to written description, the CAFC cites a 1931 Supreme Court case: Permutit v. Graver, 284 US 52. The CAFC notes the requirement that a specification describe the manner of making and using ... AND that the specification show that the patentee had possession of the claimed invention at the time of the application. Yes, Union Oil, 208 F.3d 989, is cited. The skilled artisan has knowledge of what came before, with the CAFC citing In re GPAC, 57 F.3d 1573.

The CAFC analogized the written description failure in this case to that of Tronzo v. Biomet, 156 F.3d 1154.