Friday, April 01, 2011

Written description found in Crown; reversal and remand

Judge Ronald M. Whyte, sitting by designation, penned the opinion in Crown Packaging v Ball Metal, with the punchline:

Because the '826 and '875 patents' common specification conveys to one of ordinary skill in the art that the patentee was in possession of the subject matter of the asserted claims, and because a material dispute remains as to what the prior art inherently discloses, we reverse and remand.

Ariad v. Lilly was cited:

The disclosure must “reasonably convey[ ] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Id. at 1351. Possession means "possession as shown in the disclosure" and "requires an objective in-quiry into the four corners of the specification from the perspective of a person of ordinary skill in the art." Id. Original claims are part of the specification and in many cases will satisfy the written description requirement. Id. at 1349. However, certain claims, such as claims to a functionally defined genus, will not satisfy the written description requirement without a disclosure showing that the applicant had invented species sufficient to support the claim. Id. [Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) ]

Crown won an argument about written description:

We agree with Crown that the written description supports the asserted claims. Ball contends that Revolution Eyewear does not apply to a specification in which the prior art problems are related to one another. According to Ball, for Revolution Eyewear to apply, a specification must independently present separate solutions to inde-pendent problems. Ball misstates our holding in Revolu-tion Eyewear. To the contrary, we specifically held in Revolution Eyewear that it is a "false premise that if the problems addressed by the invention are related, then a claim addressing only one of the problems is invalid for lack of sufficient written description." 563 F.3d at 1367.

Of enablement and written description:

Indeed, Ball's argument here boils down to whether the specification "describe[s] the manner and process of making and using the invention so as to enable a person of skill in the art to make and use the full scope of the invention without undue experimentation." LizardTech, Inc. v. Earth Res. Mapping, 424 F.3d 1336, 1344-45 (Fed. Cir. 2005) (also noting that enablement and written description "usually rise and fall together"). However, Ball has never asserted an enablement chal-lenge to the specification, nor does Ball claim to introduce an enablement challenge on appeal. Perhaps more impor-tantly, there is no evidence in the record to suggest that Crown's patents are not enabled.

Tronzo v. Biomet, Inc., 156 F.3d 1154 (Fed. Cir. 1998) was discussed.


A "patentee need only describe the product as claimed, and need not describe an unclaimed method of making the claimed product." Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1331-33 (Fed. Cir. 2003).

Seaborg was cited concerning anticipation:

Moreover, inherent anticipation requires more than mere probabilistic inher-ency, see Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991), and more than the presence of an unrecognized de minimis quantity of claimed substance in the prior art. See In re Seaborg, 328 F.2d 996 (CCPA 1964). But these cases "do not show that inherency requires recognition" of the inherent element. See Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003).

There was a partial dissent:

Under our written description precedent, failure to disclose a claimed invention is fatal to a claim’s validity. In Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010), we held that “the hallmark of written description is disclosure.” “[I]f the claimed inven-tion does not appear in the specification, . . . the claim . . . fails regardless [of] whether one of skill in the art could make or use the claimed invention.” Id. at 1348. The specification must convey with “reasonable clarity” to those of skill in the art that the inventor was in posses-sion of the claimed invention as of the filing date of the patent application. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).

***On Ariad v. Lilly

***Also on written description, see the BPAI decision in Ex parte Donald Smart:

“Adequate written description means that the applicant, in the
specification, must ‘convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the [claimed]
invention.’” Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1379
(Fed. Cir. 2009) (reh’g. en banc denied Sep. 18, 2009) (citation omitted).


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