Introduction
Many of the recent decisions concerning patent claim validity have focused on whether or not the claims cover inventions meeting the requirements for subject matter eligibility under § 101 since the infamous Alice decision. This commentator has blogged on that very topic and her blog on the Enfish decision appeared at www.IPWatchdog.com in 2016. This blog will focus on some of the other points of patent application preparation that may crop up during an infringement proceeding and prevent the patentee from prevailing. These points apply to all patent applications no matter what the subject area.
A May 2017 opinion granting the defendants’ motion for summary judgment resulting in claims invalidation is a good reminder that the specification is a critical aspect of a patent application to establish that the inventor had possession of the invention at the time the application was filed. The patentee’s specified claim of priority to an earlier filed application may not necessarily be the effective filing date if the earlier application’s specification is found to be “invention disclosure” deficient. Losing a priority date for reasons discussed below may well result in a situation where previously unconsidered intervening prior art is fair game during a claim invalidation proceeding.
In D Three Enterprises, LLC v. Rillito River Solar, LLC and Sunmodo Corp., case no. 15-cv-1148 (D. Colo. 2017), the district court invalidated several of D Three’s claims in two patents at the summary judgment stage of the lawsuit because the claims were not supported by the application’s original provisional application disclosure. Although D Three had filed two separate lawsuits, the defendants filed joint motions for summary judgment. It is not clear why the cases were not consolidated.
The D Three court went to great lengths to point out that the written description requirement under § 112(a) is distinct from the enablement requirement. Under § 112(a), “]t]he application’s specification shall contain a written description of the invention and of the manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which pertains . . . to make and use the same.” The written description is intended to establish that the inventor was in possession of the invention as of the filing date sought. D Three Court citing Ariad Phar., Inc. v. Eli Lily & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010). This requirement is achieved through descriptive means as words, structures, figures, diagrams, formulas, etc. that set forth the claimed invention.” D Three opinion citing Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319 (Fed. Cir. 2003).
Furthermore, all limitations expressed in actual claims must appear in the specification. The Federal Circuit has interpreted this requirement to mean that the written description must actually or inherently disclose the claim element according to the jurisprudence of the Federal Circuit on which the D Three court relied. Where, for example, a provisional patent application is involved, this jurisprudence requires that “one skilled in the art, reading the provisional patent application must reasonably discern the limitation at issue in the challenged claims within the original disclosure. “If the asserted claims describe an invention that ‘is an obvious variant of that which is disclosed in the [earlier] specification,’ or ‘renders obvious the invention for which an earlier filing date is sought,’ that is insufficient.” D Three opinion citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1007).
The D Three case was complicated by the fact that the chain of applications starting with a 2009 provisional patent application included a continuation-in-part application (“CIP”). A CIP application may include subject matter that appears for the first time in the CIP application. Any claims derived from this additional subject matter are not entitled to any earlier application. Any patent resulting from a CIP application may have claims with two different effective filing dates – a date for a previously filed application and the filing date of the CIP.
This blog will review the many issues addressed in the opinion and the court’s responses. The district court’s opinion itself is worth a read because it provides a “real world” scenario of how “text book” procedures can become important considerations in a patent infringement case. Moreover, these issues and the court’s detailed analysis provide a good reminder of patent law principles and just how difficult it can be to write an application that will withstand future challenges to validity. It is noted that the court emphasized claim invalidation must be based on clear and convincing evidence or, as the court put it, the court must be convinced that invalidation of the suspect claims is appropriate.
Three D appealed the decision to the Federal Circuit. The Federal Circuit affirmed the district court’s opinion in May 2018.
Take home points are presented at the end of the blog.
Discussion
Issue: Is claim validity assumed if the USPTO did not question the validity of a claimed earlier effective filing date?
Plaintiff’s argument: The claims at issue were allowed by the USPTO and awarded an effective filing date corresponding to the filing of a provisional application in a long chain of applications. As such the challenged claims were entitled to a presumption of validity.
Court’s Response: There is no presumption that a patent is entitled to an earlier filing date. The presumption that claims are valid rests on the merit of claims based on their novelty and non-obviousness according to the prior art and meet the requirements for subject matter eligibility. Here, the plaintiff could not present evidence showing a decision by the PTO or the Board of Patent Appeals and Interferences regarding whether the specified effective filing date are to be presumed valid.
Issue: Can select limitations from the specification’s preferred embodiments be imported during a patent invalidation proceeding to render previously approved claims invalid?
Plaintiff’s and Defendants’ Positions: The defendant argued that the suspect claims were broader than the original provisional patent application’s disclosure. The plaintiff argued that the defendants were trying to import select limitations from the disclosed preferred embodiments described in the specification.
Court’s Response: The plaintiff was misreading sections 120 and 112. The question is not whether the broad scope of plaintiff’s claims should be limited to its disclosed preferred embodiments. The question under well-settled patent law is whether the Plaintiff’s applications (particularly the very first 2009 application) describe inventions at least equal in breadth to the asserted claims. If not, then the asserted claims were not entitled to the earlier effective filing date. That is, the inventor cannot claim what was not disclosed.
Issue: Do “comprising” claims mean that the claims are not actually excluding unidentified elements (i.e., elements not actually in the claim)? Do such claims nevertheless include an element, in this case a washer, that was not mentioned in the claim?
Court’s Response: The court opined that the at-issue claims were broad enough to include a soft washer or not. However, even with “comprising” claims, the inventor must be able to locate within the written description the information which support the full scope of the “comprising” claim. That is, comprising claims are not exempt from the written description requirement according to the case law of the Federal Circuit which was cited by the D Three court.
Issue: Are an application’s figures sufficient to disclose an invention when the narrative description itself if incomplete? Here the original 2009 application disclosed an assembly for roof mounts with and without soft washer. However, the 2009 application only disclosed one invention that lacked a washer. Most of the disclosed embodiments included a soft washer.
Court’s Response. The court found that the 2009 application’s narrative description did not suggest that the figures were incomplete or that a soft washer was included in each and every Figure. The court found that certain Figures in the 2009 application did not include a washer. The application therefore had disclosed an assembly both with and without a washer.
Issue: Is the “phrase incorporated by reference” sufficient for establishing that a later filed application is entitled to the earlier application’s filing date?
Court’s Response. Here is where things became tricky. The answer is yes, this phrase will generally include all that was previously disclosed as long as the instant specification is itself consistent with what was previously disclosed. The court found that a later filed 2011 application properly incorporated 2009 and 2010 applications by reference and that the incorporation included both the washerless and washer-including assemblies. The beginning with the 2012 application, the specification suggested that the washer was “in all embodiments” and “regards only the embodiments in the subset of figures under discussion. The commentator notes that the referred-to Figures were 10-14- 21-22, 25a-b and 27 a-c. The washerless assembly had been depicted in Figures 27-33 and 41 in the 2009 application. The court found that the plaintiffs’ application ambiguous as to whether the plaintiff intended to abandon the washerless assembly disclosed in 2009 in its 2012 application.
Issue: Is an application depending from an earlier filed application entitled to its asserted claims if these claims are broader than what was originally disclosed?
Court’s Response. The inventor had disclosed one type of attachment bracket for the washerless assembly. The asserted claims were not limited to this type of attachment bracket – a W-shaped prong and face seat. The 2009 application and each intervening application disclosed three types of attachment bracket: support post, W-pronged, and T slide. The W-pronged bracket was the only attachment bracket that the application disclosed as being bolted through the flashing either with or without a washer. Therefore the asserted claims were broader than what was disclosed and were not entitled to the effective 2009 filing date because the inventors did not possess a washerless assembly other than the one requiring the W-pronged attachment bracket. Here, the disclosure of one species (the W-pronged bracket) was not found to support the asserted claim of three brackets (i.e., a genus claim).
Issue: What if the positioning of a component as claimed in the original application differs from the disclosed positioning of the component as claimed in a later application claiming priority to the original application? Here the original 2009 disclosure disclosed a washer positioned above the sheet member. In the intervening applications, the assemblies had a washer placed either above the sheet member or both above and below the sheet member.
Court’s Response. Switching the location of the soft washer would eliminate the lack of support in the original 2009 application with one exception – one skilled in the art would discern from the 2009 application that the plaintiff had invented an assembly where the disclosed soft washer could be positioned in other locations of the assembly. Here, the plaintiff could offer no evidence to meet the exception. As such, the filing dates for the two patents in suit were actually the filing dates of the applications directly preceding the two issued patent documents and not the 2009 application.
Issue: Do the effective filing dates of Sept. 4, 2013 and Oct. 2, 2014 (and not Feb. 8, 2009) render the “problematic” claims invalid?
Court’s Response: It is axiomatic that “[t]hat which infringers if later, anticipates if earlier.” Three D court quoting SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1321 (Fed. Cir. 2006). Here, the the first public sale dates [by both defendants] were earlier than the effective filing dates of the challenged patents. The defendants’ alleged infringing products were first sold in 2009 and 2010, or several years before the actual effective filing dates of the patents in suit.
The court concluded that the defendants had meet the burden of providing by clear and convincing evidence that the asserted claims were not entitled to the 2009 filing date.
Take Home Points
- Adequate disclosure of the invention in the written description and drawings is essential to ensure that a later filed application’s claimed priority date is also the later filed application’s effective filing date.
- Adequate disclosure in the specification is required to support claim validity. A too broad of claim not supported by the specification’s disclosure either in an instant application or one relying on incorporation by reference of an earlier filed application may be subject to invalidation in a patent infringement lawsuit.
- When relying on “incorporation by reference to an earlier application,” be careful to not inadvertently abandon the earlier invention.
- Develop a strategy for filing multiple applications. Although not discussed in this blog, the D Three case briefly discussed how published patent publications under § 122 may serve as invalidating prior art if they are published before the “true” effective filing date of a later-filed application by the same applicant.
- Consider developing a patent application filing strategy to minimize the types of situations D Three faced and ultimately could not overcome.
© 2018 by Troy & Schwartz, LLC
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