The written description requirement is stated in 35 U.S.C. 112 which recites that the “specification shall contain a written description of the invention.” The standard for the written description requirement is whether the disclosure or application reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter. A body of case law exists that informs the inventing community how to satisfy the written description requirement. Hologic, Inc. v. Smith & Nephew, Inc. (Fed. Cir. March 14, 2018) is another example of how to reason through whether the written description is satisfied. In particular, the Federal Circuit used both the text and drawings of the patent specification to show that the written description requirement was satisfied. They also reasoned that the structural assembly of the device could provide written description support of the claimed limitation.
Hologic, Inc. v. Smith & Nephew, Inc.
In Hologic, S&N (patent owner) presumably alleged that Hologic (alleged infringer) infringed on its patent, namely, US Pat. No. 8,061,359 (‘359 patent). In response, Hologic initiated an inter partes reexamination in an attempt to invalidate the patent to avoid patent infringement liability. Hologic is an appeal of the decision of the inter partes reexamination.
The ‘359 patent is a national stage U.S. patent application based on an earlier filed PCT application. The PCT application was made public more than one year before the filing date of the patent application which matured into the ‘359 patent. The claims of the ‘359 patent included claim terms which were not used in the earlier filed PCT application.
In the inter partes reexamination, Hologic argued that the earlier-filed PCT application is prior art to the ‘359 patent because the claims of the ‘359 patent do not have written description support in the earlier filed PCT application. If true, then it would difficult or impossible to overcome the earlier filed PCT application in terms of novelty and nonobviousness because the earlier filed PCT application is nearly identical to the ‘359 patent. The ‘359 Patent would then be invalid and S&N would avoid patent infringement liability.
Hologic argued that three claim terms of the ‘359 patent do not have written description support from the earlier filed PCT application. Hence, the earlier filed PCT application is an invalidating prior art reference and not a priority document of the ‘359 patent. The claim terms at issue were “light guide” “first channel” and “permanently affixed.”
Written description requirement satisfied for “light guide”
The claims of the ‘359 patent recited light guide but the earlier filed PCT application did not use the term light guide in the specification. Because of this, Hologic argued that the earlier filed PCT application did not provide written description support for “light guide” and should be an invalidating prior art to the ‘359 patent. The Federal Circuit disagreed. Because the earlier filed PCT application disclosed a “fibre optic bundle” which is a type of light guide, the earlier filed PCT application provides written description support for “light guide.” In other words, disclosing a species provides written description support for the genus. Be aware to not describe the species so that the written description is narrow because that would tend to narrow the patent protection.
Be aware that this is not the same standard in many foreign patent offices. In foreign countries, the patent office requires the disclosure to expressly recite the genus and not just rely on a disclosure of a species.
Many foreign patent offices also require an express description of intermediate generalizations. For example, expressly describing the species and the genus of the species may not be sufficient when trying to claim an intermediate embodiment of the genus and species. For example, disclosure of a fastener and a nut and bolt might not be sufficient to claim a clamp during patent prosecution in foreign jurisdiction because a clamp might be an intermediate generalization between the two extremes of the fastener (genus) and nut and bolt (species).
Written description requirement satisfied for “first channel”
In regards to the “first channel” claim language, the Federal Circuit found written description support in Figures 2 and 3 as element 6 and described in the earlier filed PCT application as a “light channel” or “viewing channel.” US patent laws do not require the specification use the exact same terms in the claims. Rather, written description support can be found in the text and the drawings of the patent specification.
Be aware that many foreign jurisdictions require a tighter correlation between the terms used in the claims and those found in the specification.
Additionally, in Hologic, written description support was also found in the claims of the earlier filed PCT application. In this regard, the claims themselves provide written description support for themselves.
Written description requirement satisfied for “permanently affixed”
Written description support for this claim phrase was found in the drawings, the text but also in the way that the device was assembled and manufactured. At one point in the opinion, the Federal Circuit stated that “the fact that viewing channel 6 is bookended by lens 13 and viewing tube 7 is evidence that these components form a unitary part that is not removable.”
Perspective based on Hologic for the patent prosecutor
One of the goals of patent prosecution is to avoid litigation issues to the extent that the patent prosecutor can anticipate them and avoid them. This is often difficult to do because of time constraints, changes in the law and technology among other reasons. In this sense, although the USPTO takes a liberal approach to the written description requirement as discussed above, foreign jurisdictions do not. Plus, even if the U.S. patent laws take a liberal approach, patent prosecution should take a more conservative approach to the extent possible. For these reasons, try your best to expressly describe those things which are implied by the drawings and the context to mitigate arguments that a patent is invalid because of lack of written description. This is not always possible but should be the goal or standard for patent prosecutors.
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.