In American Piledriver v. Geoquip and Bay Machinery, the patentee (Piledriver) sued two different entities (Geoquip and Bay Machinery) in two different venues or courts for patent infringement.  Both courts construed the patent claims but both Courts defined the same terms differently.  Nonetheless, both Courts came to the same conclusion that the defendants did not infringe Piledriver’s patent.  Hence, the difficulty in predicting the outcome of patent litigation.  Piledriver appealed.

In order to understand the holding of the case and possible strategies in writing patent applications, it is important to understand the patented technology, the claim language at issue and the design around employed by the defendants.

PATENTED TECHNOLOGY:

The invention relates to a vibratory pile driver.  Vibration and weight of the pile drive the piles into the ground.  The prior art utilized a pair of eccentrically weighted cylinders either intergral with the gear or connected to a gear.  The rotational axes of the eccentric weights are horizontally lined up and rotated in opposite directions to remove any horizontal movement caused by rotation of the cylinders.  Only the vertical movement is left.  It is easier to understand operation of the invention by reviewing Figures 1 and 3 below.

CLAIM LANGUAGE:

The claims required an eccentric weight portion.  Based on the consistent use of the terminology in the claims, the specification and the prosecution history, the court affirmed the definition of the term adopted by the Virginia court.  In particular, the Virginia Court defined the term “eccentric weight portion” to mean “that portion of the counterweight that extends forward or rearward from the front or back face of the gear portion such that it shifts the center of gravity radially outward from the gear’s rotational axis.” (emphasis added).  The eccentric weight portion is shown in Figure 3 above.

Design around:

The accused infringing device is shown below.  As can be seen, the weight which vibrates the gear is embedded within the gear itself.  The eccentric weight does not extend forward or rearward.

PATENT DRAFTING TIPS:

Based on this case, in drafting a patent application, the drafter should consider the alternative design arounds and include them into the patent application if possible.  Most reputable patent attorneys will include alternative embodiments.  A balanced approach must be employed since adding too many different embodiments may unreasonably increase the cost of the patent application.  However, if there is a purpose for adding various alternative embodiments exist, then they should be added.

The claim language also needs to be crafted so as to be broad enough to encompass those potential alternative design arounds.  This is sometimes hard to do since you are called upon to look into the future.  More importantly, even if the potential alternative design arounds are less optimal than the present invention, it may be beneficial to include the less desireable embodiment in the patent application.

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. 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.

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.

Present Invention

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.

Divided court

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 James@OCPatentLawyer.com. 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.

In the following case, the patentee (“Centocor”) filed a patent application to an antibody having various characteristics.  For simplification, the characteristics relate to a constant region and a variable region of an antibody.  Centocor utilized a variable region of a mouse and a constant region of a human to produce the antibody.  A competitior (“Abbott”) produced an antibody having the same purpose as Centocor’s antibody except that both the variable and constant regions of Abbott’s antibody was “fully human” which is more desireable than Centocor’s antibody.  Centocor filed claims in one of their pending patent application directed to a “fully human” antibody which ultimately issued as a patent and is at issue in the current litigation.

During litigation, Centocor had to show that the Centocor patent application had a “written description” of the “fully human” antibody.  Centocor contended that Centocor’s patent applications disclosed (1) terms such as human variable region and human constant region, (2) the desirability of a “fully human” antibody, and (3) an article that suggested the possibility of developing such invention.  However, the Court characterized these instances as a “mere wish or plan” for obtaining the claimed invention.  The steps to develop a “fully human” antibody was not routine or convention and was not within a well developed and mature technology.  The Court held that none of these instances in the patent application referring to “fully human” antibodies showed that the inventor had possession of the claimed invention.  Accordingly, the Court held the claims at issue invalid for lack of written description.  Centocor v. Abbott, 2010-1144 (Fed. Cir. Feb. 23,2011).

The Court also provided guidance as to how much a patent application needs to disclose in order to satisfy the “written description” requirement.  The bottom line is that “routine”, “conventional” and “well developed and mature” technology requires less explanation.  If one is unsure whether a certain concept is conventional, routine or well developed and mature, then one should lean toward a fuller and more detailed disclosure in order to avoid downstream legal expenses relating to proving up “written description”.

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. 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.

For example, one principle in drafting a patent application is that the claims must be commensurate in scope with the description of the invention made in the application.  If the claims are too broad in light of the description or the description is too narrow in light of the claims, then the courts will invalidate the patent for failing to satisfy the “written description” requirement.  This principle, among others, might be the subject of a section in a DIY patent drafting book but, in my opinion, are only assimilated into one’s writing style through many years of practice and mentoring by a more senior patent attorney.  Accordingly, one should seek the advice of a competent patent attorney when protecting an invention through patents.

The following case illustrates one way in which an alleged infringer attempted to argue that the patent failed to satisfy the written description requirement but failed.  You can appreciate the complexity of the written description requirement and how this and many other patent law principles may not be conducive to a short description in a DIY patent drafting self help book.

The patent at issue was directed to a sunglass lens that can be removeably attached to prescription glasses.  The sunglass lens is attached to the prescription glasses by magnets.  The prior art magnetically attached the sunglass lens by mounting corresponding magnets in the frame of the prescription glasses.  Unfortunately, this set up weakened the frame of the prescription glass.  Also, the sunglass lens tended to fall off of the prescription glasses.  The patented invention solved these two problems (i.e., decreased strength and stable support) by embedding the magnets into projections formed in the prescription glasses and top mounting the sunglass lens on top of the magnetic projections.

Revolution built a similar device but attached the sunglass lens to the bottom of the magnetized projection.  They attempted to argue that the claims were invalid for not being commensurate with the scope of the detail description.  The specification discussed both the decreased strength and stable support problems and asserted that the invention solved these two problems.  The claims were directed to only the decreased strength problem and not the stable support problem.  Since the claims were broad enough to cover both top and bottom mounted sunglass lens, Revolution contended that the claims were not commensurate with the detailed description.  The Court disagreed.  It held that inventors can frame their claims to address one problem or several, and the written description requirement is satisfied as to each claim as long as the description conveys that the inventor was in possession of the invention recited in the claims.  Revolution Eyewear, Inc. v. Aspex Eyewear, 90 USPQ 1733 (Fed. Cir. 2009).

Should you have any questions, please feel free to contact me at 949-433-0900 or James@OCPatentLawyer.com.