A patent specification has a number of different legal requirements. One of those requirements is that the patent specification must provide a “written description” of the claimed invention. 35 U.S.C. § 112 recites that the “specification shall contain a written description of the invention ….”
An excerpt from the Stanford case discussed below explains the standard to determine whether the written description requirement has been satisfied.
Whether a patent claim satisfies the written description requirement of 35 U.S.C. § 112, paragraph 1, depends on whether the description “clearly allow[s] persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991) (internal quotation marks omitted) (quoting In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)).
[W]hatever the specific articulation, the test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
Put simply, the written description is satisfied when an explanation of the claimed invention is provided by words and drawings.
This is easier said than done. For example, when the invention is to a combination of known components and known methods used in a unique and nonobvious way, the known components and known methods are sometimes summarized or referred to by its industry name. They are referenced in the patent specification by their industry name, tradename, brand name and model number. However, there may come a time when particular piece of information about the known component or known method is not expressly stated in the patent specification except by its industry name but it would be beneficial to include some aspect of the known component or known method into the claims for the purposes of securing a patent. This was the issue in Stanford Univ. v. Chinese Univ. of Hong Kong (Fed. Cir. June 27, 2017) and whether such reference could provide an implicit support for something that was not expressly stated in the patent specification.
In Stanford, the patent owner attempted to show by reference to a known method that the claimed invention satisfied the written description requirement even though the words of the claimed invention were never expressly used in the patent specification. In particular, the claim recited a random massively parallel sequencing. But, the patent specification never expressly stated that the random aspect of that phrase. Nevertheless, by reference to a known method, the patent owner attempted to show that the written description requirement was satisfied with respect to the random aspect.
The patent drafter had generically described the known method in the patent specification by making reference to particular products utilizing that method in the patent specification. An excerpt of the patent specification is shown below:
A methodology useful in the present invention platform is based on massively parallel sequencing of millions of fragments using attachment of randomly fragmented genomic DNA to a planar, optically transparent surface and solid phase amplification to create a high density sequencing flow cell with millions of clusters, each containing ~1,000 copies of template per sq. cm. These templates are sequenced using four-color DNA sequencing-by-synthesis technology. See, products offered by Illumina, Inc., San Diego Calif. Also, see US 2003/0022207 to Balasubramanian, et al., published Jan. 30, 2003, entitled “Arrayed poly-nucleotides and their use in genome analysis.” (emphasis added).
As shown, the patent specification made reference to a massively parallel sequencing (MPS) of nucleic acid sequences and tells the reader to “See, products offered by Illumina, Inc., San Diego Calif.” However, the above quoted section of the patent specification does not expressly state that the massively parallel sequencing was random.
The claimed invention was directed to a random massively parallel sequencing. The alleged defendant attacked the validity of the patent by arguing that the claims failed to satisfy the written description requirement for “random.” On the other hand, the patent owner attempted to show that the patent specification did describe the random feature of the massively parallel sequencing because the patent specification referenced the Illumina products and the Illumina products as of the filing date of the patent application used random massively parallel sequencing.
In the Federal Circuit’s analysis, they made clear that the patent specification satisfies the written description requirement when the essence of the original disclosure (i.e., patent application specification as of the filing date thereof) conveys the necessary information-“regardless of how it” conveys such information. In this regard, it did not matter that the evidence was by reference to a known method.
The Federal Circuit remanded the case back to the Board and requested the Board examine whether a person of ordinary skill in the art would have known, as of the priority date, that the ’018 patent specification’s reference to Illumina products meant random MPS sequencing as recited in the claim, by examining the record evidence as to the pre-filing date art-related facts on Illumina products.
In light of the Stanford case, patent application should continue to reference product names and methods into the patent specification. This can enable the patent prosecutor to be able to argue that the patent specification does provide support for a feature or characteristic of the known product or known method which is not expressly stated in the patent specification. The patent drafter should be careful so that reference to the known product or method does not define the present invention but only illustrates what the present invention may be.
I invite you to contact me with your patent questions at (949) 433-0900. 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.