Upon filing a patent application with the United States Patent and Trademark Office, your invention receives patent pending status. However, you do not have enforceable rights at the time of filing., and you cannot stop someone else from competing against you. Your patent application must mature into an issued patent, which may take years. Even though you cannot force anyone to stop competing against you during the initial pendency stage, there may be some advantages to the delayed prosecution in obtaining your patent. If your competitor enters the market, you can inspect their product and redraft your claims while you are waiting for examination so that your claims specifically cover your competitor’s product. You foresee your competitors products before examination of your claims. You take the guess work out of drafting your claim set. If the patent issues, then you would be in a great position to assert patent infringement.
However, there are limits as to how far you can push the claim language to cover your competitor’s product. For one, you can only present claims directed to subject matter disclosed in the original patent application. If you competitor has found a different way of providing the same function that your patent protects, then it may be difficult or impossible to present claims that cover your competitor’s product.
The following case illustrates another limitation on your ability to present claims directed to your competitor’s products. In particular, the claims that you present are limited to the scope of what you describe in the patent application. If you disclose a few ways (i.e., species) of performing a function, then can you push the language so broadly that you effectively capture all ways (i.e., genus) of performing that function. How broad of a generic claim language can you present if you disclose a limited number of species? The following case illustrates one example.
In Synthes USA v Spinal Kinetics (Fed. Cir. 2013), the patent at issue was directed to replacement spinal discs. The original specification described the replacement discs as having “grooves” (i.e., species). A competitor used a different structure other than grooves in the replacement disc. Presumably, it would avoid infringement of a claim requiring grooves. During prosecution of the patent application and after seeing the competitor’s replacement disc, the patent owner amended the claims to recite an “opening” (i.e., genus) which is broader than the earlier “grooves” limitation, and would encompass the competitor’s product.
The competitor argued that the claims are invalid for failing to satisfy the written description requirement. In simplistic terms, this means that you must write a description of your invention and submit that description to the patent office. The test to determine whether you have satisfied the written description requirement is to determine whether the specification demonstrates that the inventor had possession of the broadly claimed invention.
In mechanical products, the written description requirement is typically not an issue unlike chemical and biological cases. Mechanical cases are thought to be fairly predictable. Hence, describing one species generally lends itself well to claiming the genus of that species. In unpredictable technologies such as chemistry and biology, the patent application must oftentimes describe more than just one species to claim the genus because just describing one species does not show that the inventor had possession of the entire genus.
In Synthes, the claimed invention was directed to a mechanical product. However, the competitor provided expert testimony that the technology is unpredictable because the claimed invention was directed to replacement spinal discs for humans, a use which would require significant amounts of engineering and design. Hence, the competitor argued that the inventor did not have possession of a replacement spinal disc broadly having holes, as the specification only discussed grooves or channels. Holes added another dimension of unpredictability to the situation because of reliability and other practical requirements for spinal replacement discs. The competitor’s expert testified that it would not be a simple substitution (i.e., between grooves and holes) but would be require care and time to replace grooves with holes, that it would require months of work, and that it would require overcoming issues of wear and other problems There are significant biomechanical property differences between holes and grooves and how they interact with the fibers.
The patent owner contended that since the Federal Circuit stated in Bilstad that the “mechanical world” is a “fairly predictable field”, the competitor would have a heightened standard to show unpredictability for the patented mechanical device. The Federal Circuit explained that there is no heightened standard., and that all defendants have the same burden. Also, the Court explained that there are no bright line rules in determining the number of species one must describe in a patent application to support a broad genus claim for any particular type of invention. Each is determined on a case by case basis.
Hence, the Federal Circuit affirmed the district court’s invalidation of the claims at issue.
In these types of cases, it is good practice to present claims that would cover your competitor’s products as the patent owner had done above. However, you may also consider adding additional narrower claims which would be more likely to survive a challenge to the written description requirement. You may also consider maintaining pendency of your patent application with the filing of a continuing (e.g., continuation) patent application. This will allow you to continue redrafting claims that may cover your competitor’s product and survive any invalidity challenges. The continuing patent application is a powerful tool for these and other purposes.
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.