Friday, July 16, 2021

CAFC discusses written description in Flashcontrol, LLC

On written description:

“The essence of the written description requirement is that a patent applicant, as part of the bargain with the public, must describe his or her invention so that the public will know what it is and that he or she has truly made the claimed invention.” AbbVie Deutschland GmbH & Co. v. Janssen Biotech, Inc., 759 F.3d 1285, 1298 (Fed. Cir. 2014). “To satisfy the written description requirement, the applicant 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 invention, and demonstrate that by disclosure in the specification of the patent.” Centocor Ortho Biotech, Inc. v. Abbott Labs., 636 F.3d 1341, 1348 (Fed. Cir. 2011) (internal quotations omitted). While the written description requirement does not require that the specification recite the claimed invention in any particular way, pointing to an “amalgam of disclosures” from which an artisan could have created the claimed invention does not satisfy this requirement. Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1349 (Fed. Cir. 2013); accord Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010). Instead, the specification must present each claim as an “integrated whole.” Novozymes, 723 F.3d at 1349. Whether the written description adequately supports a patent claim is a question of fact. Vasudevan Software v. MicroStrategy, Inc., 782 F.3d 671, 682 (Fed. Cir. 2015).

Of some specific issues

Flash-Control repeatedly asserts that the district court “sid[ed] with Intel” and improperly viewed the evidence in the light most favorable to Intel. See, e.g., Appellant’s Br. 14. But Flash-Control does not explain what specific reasonable inferences that court failed to draw in its favor, and we find none in the district court’s decision. Viewing the evidence in the light most favorable to Flash-Control, we agree with the district court that Flash-Control has failed to identify any disclosure that “shows a second buffer that can store a write request,” as required by step 3, or “the writing of a portion of a page to volatile memory,” as required by step 2. Decision at *4. While Figures 6 and 9 of the ’880 patent show one or two buffers being paired with “NAND memory” (a type of nonvolatile memory) there is nothing in the figures or text description of the figures to indicate whether those buffers act as the second buffer— i.e., whether they can store a write request to modify a portion of a page as required by step 3. J.A. 514–16 ⁋ 60. FlashControl’s arguments concerning Figures 3 and 12 of the ’880 patent similarly point to items that could, with more, be the second buffer but fail to point to anything specifying that those items perform the second step of the claim. The specification language referring to two “new commands”— “[r]ead byte out of page” and “[w]rite byte out of page”— comes the closest to supporting the claimed technique of operating on a portion of a page as required by step 2. ’880 patent 4:30–36. But the specification never elaborates on these “new commands” and does not indicate whether they interact with any buffer or volatile memory.

A court drawing on its own knowledge is legal error

Flash-Control also argues that the district court engaged in improper factfinding by stepping into the role of an artisan in its analysis of what an artisan would understand about the specification. Appellant’s Br. 26–28. The district court stated that it drew upon its own knowledge in its opinion, and while that would ordinarily constitute legal error, here the district court did so only after finding that Flash-Control had failed to show a triable issue of fact as to written description on the evidence of record. Decision at *8 n.1. The district court expressly drew on its own knowledge only in order to expound upon additional reasons for rejecting Flash-Control’s arguments. Although the better course would have been to omit that additional reasoning, the court’s separate findings made under the proper summary judgment standard are sufficient to support the judgment. And because we review judgments, not opinions, Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983), and the judgment in this case was based upon the evidence of record, we conclude that the inclusion of that additional reasoning was not reversible error


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