Written Description Requirement
To get a patent, an inventor must satisfy the written description requirement. This is accomplished through the preparation of a patent application which describes the invention and shows any drawings if necessary for the understanding of the invention. To satisfy the written description requirement, the discussion of the invention must correspond to the claims. Otherwise, the claims will be deemed invalid for failing to satisfy the written description requirement.
The invention at issue in the following case reduces the amount of aluminum (i.e, metal usage) in a soda can. Crown Packaging v. Ball Metal. <insert link to case>. The soda can has a can body and a can end which is attached to the can body. The patent application describes two different areas which can be modified to reduce the amount of aluminum used compared to prior art cans. These two areas are the chuck wall 24 and the reinforcing bead 25. The present invention increased the angle of the chuck wall 24 and narrowed a width of the reinforcing bead 25 compared to the prior art cans. See comparison of present invention and prior art cans below.
Written Description Issue
The claims of the patents at issue had broad claims directed to one of the features but not both. In particular, the independent claims were broadly written so as to be directly only to the large angle chuck wall 24 regardless of the width of the reinforcing bead. The defendant (Ball Metal) argued that the claim did not satisfy the written description requirement because the specification did not describe an embodiment that was directed only to the large angle chuck wall 24 but instead always discussed the invention in relation to both the large angle of the chuck wall 24 and the narrow reinforcing bead 25. The district court agreed but on appeal the Federal Circuit reversed.
Inspection of structure of claim set saves the day
The Federal Circuit reversed based on its review of the specification and the structure of the claim set of the patent application. With respect to the specification, the Federal Circuit stated that “Nowhere does the specification teach that metal saving can only be achieved by increasing the chuck wall angle along with narrowing the reinforcing bead.” (emphasis added). With respect to the claim structure, the Federal circuit noted that the original independent claims were directed to the chuck wall angle without reference to the narrow reinforcing bead and that the narrow reinforcing bead limitation was added as a dependent claim. The claims show that the applicant had in mind the invention as claimed, namely, a large angle chuck wall regardless of the size of the reinforcing bead. Hence, the written description requirement was met by implying such reading through the context of the text and the drawings of the patent application.
Present case distinguished from three prior cases
Furthermore, Ball Metal (defendant) argued that the patent did not satisfy the written description requirement for the same reasons discussed in relation to three prior cases, namely, Tronzo v. Biomet, LizardTech and ICU Med. v. Alaris Med. Sys. The Federal Circuit distinguished these cases with the instant case by stating that the patents at issue in these cases unambiguously limited the scope of the invention. In Tronzo, the patent application discussed a feature as being an extremely important aspect. LizardTech described only one specific method for solving one particular problem. In the patent at issue in the current litigation, the patentee (Crown) described at least two different ways of solving the problem of metal usage. In ICU Medical, the patent application described a feature as necessary.
A three panel judge decided the current case. The majority made up by Newman (Circuit Judge) and Whyte (Circuit Judge) reversed the District Court’s decision. However, Dyk (Circuit Judge) dissented from the majority opinion. Dyk opined that the patent application failed to satisfy the written description requirement because it failed to explicitly describe the large angle chuck wall regardless of the width of the reinforcing bead width.
Patent drafting strategy
Although not required by the majority, it is recommended to make explicit statements of aspects which are considered to be implied by the text of the patent application with the goal of trying to avoid litigation. Accordingly, the patent drafting strategy is to meet the higher standard put forth by the dissent and if anything is missing from the patent application, rely on the reasoning put forth by the majority. For example, a brief paragraph that states that elements 1, 2 and 3 may be practiced in any combination with each other or individually may be made explicitly in the patent application to explain that the inventor contemplates the following combinations 1 and 2, 1 and 3, 2 and 3, or 1, 2 or 3 individually. Oftentimes, this is the area which is deficient in patent applications prepared by laypersons. The simple rule is to try to make explicit things that are implicit in the text.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.