Tuesday, October 29, 2013

Appellant Synthes loses at CAFC on written description

Synthes v. Spinal Kinetics

The district court, at Synthes’ urging, broadly construed the phrase “third plate including a plurality of openings,” which appears in claim 29. The relevant claims, moreover, include broad language added during prosecution. Synthes amended the application that became the ’270 patent to add the concept of “openings” in claim 29 almost five years after the application was originally filed, and after SK’s M6 devices were already on the market. See J.A. at 20676; 25157–25179. The origi- nal disclosure claimed and disclosed a plurality of grooves and a plurality of channels, but did not describe “open- ings” generally. See id. While broadening claims during prosecution to capture a competitor’s products is not improper, the written description must support the broadened claims. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 909 n.2 (Fed. Cir. 2004) (“[I]t is not improper for an applicant to broaden his claims during prosecution in order to encompass a competitor’s prod- ucts, as long as the disclosure supports the broadened laims.”) (citing Kingsdown Med. Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867, 874 (Fed. Cir. 1988)). After hearing the testimony of SK’s expert, Dr. Lee, and its research and development manager, Mr. Koske, indicat- ing that the as-filed disclosure did not demonstrate pos- session of an intervertebral implant that employed any sort of openings anywhere on the cover plates, the jury determined that the ’270 patent was invalid under § 112, paragraph 1. As the district court did before us, we find that substantial evidence supports that conclusion.
Section 112, paragraph one of Title 35 requires a pa- tentee to provide a written description that allows a person of skill in the art to recognize that the patentee invented what is claimed.3 See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562– 63 (Fed. Cir. 1991)). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor ha[d] possession of the claimed subject matter as of the filing date.” Id. Determination of whether a patent satisfies the written description requirement is a question of fact. Id. (citing Capon v. Eshar, 418 F.3d 1349, 1357–58 (Fed. Cir. 2005)). The “level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id.

Synthes contends that the jury’s verdict of invalidity for a lack of adequate written description was not supported by substantial evidence. Synthes asserts that the ’270 patent’s written description does not limit the claimed “plurality of openings” to peripheral grooves. Synthes next argues that the testimony and evidence presented by SK via its expert and fact witnesses regarding the “plurality of openings” limitation did not support the jury’s verdict. Synthes also disputes the district court’s post-trial conclusion that SK produced evidence demonstrating that the field of intervertebral implants was sufficiently unpredictable such that a disclosure of one species of openings would not be enough to claim the entire genus. We disagree on all counts.


The written description, however, never discloses anything broader than using grooves to anchor the fiber system to the cover plates.

Taken together, Mr. Koske’s testimony is at least cir- cumstantial evidence that it would not be evident that peripheral grooves on the cover plates would disclose to skilled artisans that internal slots would serve the same function. Mr. Koske’s testimony and the exhibits used during it, coupled with Dr. Lee’s testimony, provided ample evidence for the jury to conclude that the written description did not support the broad claim limitations in the asserted claims.

And, even if Synthes’ cross-examination of Dr. Lee would allow us to draw a different conclusion, so long as substantial evidence supported the jury’s verdict, we must affirm its decision. See First Nat’l Mortg. Co., 631 F.3d at 1067–68; see also Guy v. City of San Diego, 608 F.3d 582, 588 (9th Cir. 2010) (“[I]t has long been held that a jury may properly refuse to credit even uncontradicted testimony.”) (cita- tions omitted); Watec Co. v. Liu, 403 F.3d 645, 651 n.5 (9th Cir. 2005) (“We will not weigh the evidence or assess the credibility of witnesses in determining whether sub- stantial evidence exists.”) (citations omitted).


First, SK had no higher burden than providing clear and convincing evidence that the ’270 patent does not satisfy the written description requirement on the “plurality of openings” limitation. Second, while we did state in Bilstad that the mechanical field was “fairly predictable,” we did not hold that all inventions that may be characterized as “mechanical” allow claiming a genus based on disclosure of a single species.
As we noted in Ariad, there are no “bright-line rules governing, for example, the number of species that must be disclosed to describe a genus claim, as this number necessarily changes with each invention, and it changes with progress in a field.” Ariad, 598 F.3d at 1351. In- deed, factual inquiries will, at times, create confounding results. But, whatever inconsistencies may appear “to exist in the application of the law, those inconsistencies rest not with the legal standard but with the different facts and arguments presented to the courts.” Id. at 1352. That is precisely the situation here.

The conclusion

Based on the foregoing, we affirm the district court’s denial of JMOL that claims 29–31 of the ’270 patent are invalid under 35 U.S.C. § 112, paragraph 1 for lacking an adequate disclosure to support the “plurality of openings” limitation. We also affirm the district court’s denial of SK’s request for attorneys’ fees under 35 U.S.C. § 285. Accordingly, we need not reach the other issues addressed by the district court and addressed by the parties in the briefing before this court.

From the dissent

The written-description challenge in this case is to structural claim language that is broader than the specific embodiments disclosed in the written description. This is not a case—such as some cases involving genetic or chem- ical inventions—in which the claim language at issue is functional rather than an identifier of structure. See, e.g., Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010); Regents of University of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997). Nor is it a case in which the claim language includes details that do not appear in the written descrip- tion. See, e.g., Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1327 (Fed. Cir. 2000). The written-description
question here is the familiar one involving whether the claim language is simply too broad given the disclosure— notwithstanding that claim language may be and com- monly is broader than described embodiments, as it identifies what aspects of the disclosed embodiments matter. See In re Rasmussen, 650 F.2d 1212, 1215 (CCPA 1981) (“[T]hat a claim may be broader than the specific embodiment disclosed in a specification is in itself of no moment.”); Ronald Slusky, Invention Analysis and Claim- ing: A Patent Lawyer’s Guide at 32-33 (2007) (discussing claim drafting process of identifying what features of embodiment matter).

In a case like this one, the written-description requirement must focus on whether the way in which the (broader) claim term differs from the (narrower) disclo- sure is pertinent to fulfilling the identified purposes of the claims at issue. More specifically, for a challenger to prove insufficiency of the written description to support the claim language, the challenger must identify the respect in which the claim language differs from the disclosed embodiments.


Nothing else Dr. Lee said makes up for the irrele- vance of the foregoing testimony. He testified that he could not find the word “openings” in the specification, see Joint App. 20852 (Tr. 2453:1-13), but that is itself of no importance: the written-description requirement is about support in substance, not about labels. Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 967–68 (Fed. Cir. 2006).

That im- portation of functional requirements is incorrect, because the term “fiber system” is entirely a structural one. “Where a claim uses clear structural language, it is gen- erally improper to interpret it as having functional re- quirements.” Schwing GmbH v. Putzmeister Aktiengesellschaft, 305 F.3d 1318, 1324 (Fed. Cir. 2002); accord Toro Co. v. White Consol. Indus., Inc., 266 F.3d 1367, 1371 (Fed. Cir. 2001) (“An invention claimed in purely structural terms generally resists functional limitation.”). Spinal Kinetics offers no convincing reason to deviate from the general rule in this case.


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