Federal Circuit Remains Split on Written-Description Requirements

A majority of the judges on the U.S. Federal Circuit appeals court has again refused to have the full court settle what many practitioners — and some of the judges — consider inconsistent caselaw concerning the requirement that patents include a written description of the invention. Specifically at issue is whether a written description is synonymous with, or distinct from, an enabling disclosure of the invention.

The Federal Circuit’s refusal came in an order denying a losing party’s request for an “en banc” review of the court’s three-judge panel decision in LizardTech, Inc. v. Earth Resource Mapping, Inc., No. 05-1062, slip op. (Oct. 4, 2005), reh’g en banc denied, slip op. (Jan. 5, 2006). LizardTech may ask the U.S. Supreme Court to visit the LizardTech panel decision — and a vigorous dissent issued by Judge Rader might convince the Court to do so — but that seems unlikely to happen given that the Court already has a number of patent cases currently on its docket.

The Federal Circuit denied similar en banc requests in Enzo Biochem, Inc. v. Gen-Probe Inc. decided in 2002) and University of Rochester v. G.D. Searle & Company, Inc. decided in 2004).

The particular controversy addressed in the LizardTech rehearing request is whether a written description, in addition to requiring an enabling disclosure, also requires a showing that the inventor “possessed the invention” when the patent application was filed; if so, what is the nature of the invention-possession requirement.

In full, the pertinent statutory clause provides as follows:

The 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 it pertains, or with which it is most nearly connected, to make and use the same . . .

[35 U.S.C. § 112 ¶ 1.]

LizardTech is the exclusive licensee of U.S. Patent No. 5,710,835, which claims methods for storing and retrieving digital images using discrete wavelet transform (DWT)-based compression. The trial court held some of the asserted claims noninfringed, and other asserted claims invalid for failing to satisfy the § 112 written-description requirement. On appeal, the Federal Circuit — which normally uses a three-judge panel — affirmed the trial court’s judgment in an opinion by Judge Bryson, joined by Judges Lourie and Schall.

The panel held that independent claim 21 and its dependent claims — claims 22-25, 27, and 28 — were directed to creating a “seamless array” of DWT coefficients generically, but that the patent’s specification disclosed only one way to create such an array: by maintaining updated sums of DWT coefficients. (See, e.g., ’835 patent at column 7, lines 1-9 & column 11, lines 53-56.) The panel reasoned that, while such a limited disclosure will not always invalidate a claim, it did so in this case because LizardTech failed to meet what the panel sees as two requirements of written-description clause:

Claim 21 is directed to creating a seamless array of DWT coefficients generically. The specification, however, is directed at describing a particular method for creating a seamless DWT, as opposed to using the disfavored, nonseamless prior art, and it teaches only that method of creating a seamless array. While the embodiment in LizardTech’s specification covers only one way of creating a seamless DWT, claim 21 is not invalid simply for that reason. A claim will not be invalidated on section 112 grounds simply because the embodiments of the specification do not contain examples explicitly covering the full scope of the claim language. . . [I]t is unnecessary to spell out every detail of the invention in the specification; only enough must be included to convince a person of skill in the art that the inventor possessed the invention and to enable such a person to make and use the invention without undue experimentation. In this case, however, LizardTech has failed to meet either requirement. After reading the patent, a person of skill in the art would not understand how to make a seamless DWT generically and would not understand LizardTech to have invented a method for making a seamless DWT, except by “maintaining updating [sic] sums of DWT coefficients.”

[LizardTech, Panel Decision, slip op. at 17-18 (emphasis added).]

To explain further why the ’835 patent fails to meet the separate possession requirement, the panel presented a hypothetical:

By analogy, suppose that an inventor created a particular fuel-efficient automobile engine and described the engine in such detail in the specification that a person of ordinary skill in the art would be able to build the engine. Although the specification would meet the requirements of section 112 with respect to a claim directed to that particular engine, it would not necessarily support a broad claim to every possible type of fuel-efficient engine, no matter how different in structure or operation from the inventor’s engine. The single embodiment would support such a generic claim only if the specification would “reasonably convey to a person skilled in the art that [the inventor] had possession of the claimed subject matter at the time of filing,” and would “enable one of ordinary skill to practice ‘the full scope of the claimed invention.’ ” . . . Thus, a patentee cannot always satisfy the requirements of section 112, in supporting expansive claim language, merely by clearly describing one embodiment of the thing claimed. For that reason, we hold that the description of one method for creating a seamless DWT does not entitle the inventor of the ’835 patent to claim any and all means for achieving that objective.

[Id. at 19-20 (emphasis added; citations omitted).]

In short, the Federal Circuit reads the written description required in § 112 ¶ 1 as having two parts:

The “written description” clause of section 112 has been construed to mandate that the specification satisfy two closely related requirements. First, it must describe 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. Second it must describe the invention sufficiently to convey to a person of skill in the art that the patentee had possession of the claimed invention at the time of the application, i.e., that the patentee invented what is claimed.

[Id. at 16 (emphasis added).]

Unfortunately for inventors, while the enablement test is well understood, many patent practitioners believe that the Federal Circuit has not explained how to tell if the possession test is satisfied.

On LizardTech’s request for rehearing en banc, nine judges — Chief Judge Michel and Circuit Judges Newman, Mayer, Lourie, Clevenger, Schall, Bryson, Dyk, and Prost — concurred in an order declining to rehear the case; only three Circuit Judges — Rader, Gajarsa, and Linn — dissented. (LizardTech, En Banc Order, slip op. at 1-2.)

The panel’s reasoning is supported by a body of Federal Circuit caselaw, including the 1991 decision in Vas-Cath Inc. v. Mahurkar and the 1997 decision in Regents of the University of California v. Eli Lilly & Co. But ultimately the reasoning rests on a matter of statutory interpretation concerning § 112 ¶ 1. And interpreting the written-description clause is essentially a grammatical question, as Judge Lourie noted by emphasizing a conjunction:

The statute clearly sets forth that “[t]he 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 it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.” Both a written description and a disclosure of how to make and use the invention . . . are required by the statute.

[LizardTech, Concurring Opinion of Judge Lourie, slip op. at 2 (original emphasis; citation omitted).]

To support this interpretation of the written-description clause — in the earlier Enzo case — Judge Lourie also remarked upon the punctuation preceding the conjunction:

[In the written-description clause] note the comma between the description requirement and the enablement provision, and the “and” that follows the comma.

[Enzo, Concurring Opinion of Judge Lourie, 323 F.3d 956, 971.]

Others disagree with that grammatical analysis and adopt a statutory interpretation of the written-description clause that requires only an enabling disclosure. These include Judges Rader, Gajarsa, and Linn and (at least in 2002) the Executive Branch of the United States. In his Enzo dissent, Judge Rader quoted from an amicus brief that the government submitted:

A straightforward reading of the text of section 112 suggests that the test for an adequate written description is whether it provides enough written information for others to make and use the invention. The statute provides that the “specification shall contain a written description of the invention . . . in such full, clear, concise, and exact terms as to enable any person skilled in the art . . . to make and use the same.” 35 U.S.C. § 112 ¶ 1. Thus, an adequate written description assures that others can “make and use” the invention.

[Enzo, Dissenting Opinion of Judge Rader, 323 F.3d at 976 (quoting amicus brief of the United States).]

Judge Rader thus sees the written-description requirement as defined solely by enablement. But he also argues that, to the extent that some caselaw describes written description as distinct from enablement, written description means only a disclosure that supports priority claims without new matter having been added during prosecution:

In 1967, in In re Ruschig, 379 F.2d 990, 154 USPQ 118 (CCPA 1967), this court’s predecessor created for the first time a new [written description] doctrine to enforce priority. To deal with new matter in the claims, the court calved a new [written description] doctrine out of the § 112 enablement requirement. As long as the new [written description] doctrine applied according to its original purpose as an identical twin of the § 132 new matter doctrine, these technical distinctions were of little practical consequence.

[Id. at 977-78 (footnote omitted).]

In short, Judge Rader’s view is that written description is satisfied by enablement, but if there is a separate written-description requirement, it is only a device to “police priority” by considering whether new matter was presented during prosecution.

In his LizardTech dissent, Judge Rader briefly repeats that view, discusses further problems that he sees with the Federal Circuit’s caselaw, and describes his disagreement with the LizardTech panel decision.

As to LizardTech, Judge Rader first asserts that the panel’s test for written description is ambiguous:

[A]fter explaining that 35 U.S.C. § 112, ¶ 1 has two separate requirements, [the panel] goes on to explain that, “[t]hose two requirements usually rise and fall together.” [The panel] further unites the requirements of paragraph 1, explaining:

Whether the flaw in the specification is regarded as a failure to demonstrate that the patentee possessed the full scope of the invention recited in claim 21 or a failure to enable the full breadth of that claim, the specification provides inadequate support for the claim under section 112, paragraph one.

Far from explaining a neutral standard for applying written description, [the panel] seems to fall back on enablement, using the latter as a proxy for the former. . .

[LizardTech, Dissenting Opinion of Judge Rader, slip op. at 9 (citations omitted).]

Judge Rader then suggests that the panel’s “fuel-efficient automobile engine” analogy is fatally flawed:

[T]he [panel] opinion explains that the written description requirement prevents an inventor of a specific fuel-efficient engine from generically claiming that engine. The only logical inference that can be drawn from the hypothetical is that claims must not exceed the disclosed embodiments. Is a claim reciting a “fastener” invalid because its specification only recites a screw? If not, is the difference based on some distinction between fuel-efficient engines and fasteners? Or is the difference found in the label “expansive claim language”? Thus, [the panel] concludes:

[A] patentee cannot always satisfy the requirements of section 112, in supporting expansive claim language, merely by clearly describing one embodiment of the thing claimed.

When did the statute’s requirement of providing an enabling description of the invention, the very objective of our patent laws, become a “mere” act that renders a claim invalid under the now-fungible requirements of section 112? In fact, [the panel] has not explained the standard that makes these claims “expansive” and invalid as opposed to merely broader than the enabling embodiment . . .

[Id. at 10 (citations omitted).]

These disagreements with the LizardTech panel might be considered the climax of Judge Rader’s dissent; it is preceded by his assessment of other problems with Federal Circuit precedent. For example, citing another case — JVW Enterprises, Inc. v. Interact Accessories, decided the day before the LizardTech panel decision — Judge Rader sees LizardTech as inconsistent:

In Lizardtech, this court invalidates claims that are broader than the disclosed embodiments because “[t]here is no evidence that the specification contemplates a more generic way” of performing the claimed invention. Meanwhile, in JVW, this court determines that the claims are properly construed as broader than the disclosed embodiments because “the patentee did not intend for the claims and the embodiments disclosed in the specification to be coextensive.” In both cases, the claims encompass more than the specification expressly describes. In Lizardtech, this court says that a claim scope in excess of the specification’s embodiments invalidates the claim. In JVM, this court says that a claim scope in excess of the specification’s embodiments grants a broader range of infringement. The facts are very similar, the results are not. . .

[Id. at 1-2 (citations omitted).]

Judge Rader opines that the reason for the dissimilar results is that the two cases concerned different issues:

Of course, the unsatisfying solution to the puzzle is simple: while JVW considered principles of claim construction in light of this court’s recent en banc clarification of claim construction [in Phillips v. AWH Corp.], Lizardtech dealt with this court’s evolving written description doctrine.

[Id. at 4 (citations omitted).]

Furthermore, while addressing a pronouncement of the law on the written-description clause in another recent Federal Circuit opinion — Capon v. Eshhar — Judge Rader “translat[ed]” the pronouncement as follows: “Bring your specifications to the Federal Circuit and we will tell you if they contain sufficient descriptions.” (Id. at 7.)

Judge Rader’s LizardTech dissent concludes by identifying statements by “a significant number of Federal Circuit judges [who] agree that this court’s evolving written description doctrine needs clarification” —Circuit Judges Bryson, Dyk, Gajarsa, Linn, and Newman — and lamenting that the Federal Circuit has for a third time declined to consider the doctrine en banc. (Id. at 11.)

However widely held Judge Rader’s views may be among U.S. practitioners and some Federal Circuit judges, unless and until the en banc appeals court or the U.S. Supreme Court considers the written-description clause in a suitable case, one must consider that the Federal Circuit’s current view — separate written-description and enablement requirements — is the law. The USPTO certainly does so consider. (Compare MPEP § 2163 (written description) with MPEP § 2164 (enablement).) Naturally, practitioners should draft patent applications to satisfy the Federal Circuit’s current view: satisfying both requirements subsumes satisfying only the enablement requirement.