Enablement and Written Description

Intro to IP – Prof Merges

Jan. 20, 2010

U.S.C. § 112: ¶ 1Disclosure/Enablement, § 112

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Base, with passageway

U-shaped bar

Cutting element attached to bar

Rotating handle at end of barCLAIM 1:ELEMENTS

Enablement/Written DescriptionCheese Slicer Specifications, ¶ X

“The handle may be turned to ... draw the cutting elementtaut so that it may properly perform its cutting function.”

Rotating handle at end of bar

Cutting element attached to bar

Base, with passageway

U-shaped bar

Claim ElementsRotating handle at end of bar

The Incandescent Lamp Patent

Incandescing conductor

Bamboo discovered as an incandescing conductor.

Claims

1. An incandescing conductor for an electric lamp, of carbonized fibrous or textile material and of an arch or horseshoe shape, substantially as hereinbefore set forth.

System claims

2. The combination, substantially as hereinbefore set forth, of an electric circuit and an incandescing conductor of carbonized fibrous material, included in and forming part of said circuit, and a transparent hermetically sealed chamber in which the conductor is enclosed.

Narrow “picture” claim

3. The incandescing conductor for an electric lamp, formed of carbonized paper, substantially as described.

Sawyer and Man Commercial product

• Is this relevant to question of infringement in this case?

Edison Patent

• Is this relevant to this case?

• Is it a defense for McKeesport Light that it has a license from Edison?

Overlapping and Blocking Patents

• Quite possible for defendant to have patents that plaintiff infringes

• Irrelevant to plaintiff’s cause of action

What is defendant’s defense?

“Is the complainant entitled to a monopoly of all fibrous and textile materials for incandescent conductors?”

If the patentees had discovered in fibrous and textile substances a quality common to them all, or to them generally, as distinguishing them from other materials, such as minerals, etc., and such quality or characteristic adapted them peculiarly to incandescent conductors, such claim might not be too broad.

Instead of confining themselves to carbonized paper, as they might properly have done, and in fact did in their third claim, they made a broad claim for every fibrous or textile material, when in fact an examination of over six thousand vegetable growths showed that none of them possessed the peculiar qualities that fitted them for that purpose. -- page 188, IPNTA

Policy rationale

Was everybody then precluded by this broad claim from making further investigation? We think not.

Edison’s experiments – relevance?

• How does this evidence bear on the question of the proper scope of Sawyer and Man’s patent?

[H]ow would it be possible for a person to know w hat fibrous or textile material was adapted to the purpose of an incandescent conductor, except by the most careful and painstaking experimentation?

If Sawyer and Man had discovered that a certain carbonized paper would answer the purpose, their claim to all carbonized paper would, perhaps, not be extravagant; but the fact that paper happens to belong to the fibrous kingdom did not invest them with sovereignty over this entire kingdom, and thereby practically limit other experimenters to the domain of minerals. . . . IPNTA p. 190

Sawyer and Mann PatentClaimed: “All Fibrous and textile material” (6,000 plus embodiments)

Enabled: Carbonized paper, plus?

Enablement Principles

The thing you have actually built; “picture claim”

Enablement Principles

The thing you have actually built; “picture claim”

The limits of what you legally enable

U.S.C. § 112: ¶ 1Disclosure/Enablement, § 112

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Written Description Under Fire

• Ariad Pharms., Inc. v. Eli Lilly & Co., 560 F.3d 1366 (Fed. Cir. 2009)

• En banc rehearing granted 8/21/09

• (1) Whether 35 U.S.C. § 112, paragraph 1, contains a written description requirement separate from an enablement requirement?

• (2) If a separate written description requirement is set forth in the statute, what is the scope and purpose of the requirement?

The Written Description Requirement

Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998).

Gentry was granted a patent for a sectional sofa comprised of a pair of reclining seats that faced the same direction. Claim 1, the broadest claim, identifies a “fixed console” between the pair of seats. Claims 9, 10, 12-15, and 19-21 are directed to a sectional sofa in which the control means are specifically located on the console.

Gentry’s Patent:

US Pat. No. 5,064,244

Claim 1

A sectional sofa comprising:a pair of reclining seats disposed in parallel

relationship with one another in a double reclining seat sectional sofa section being without an arm at one end . . . , each of said reclining seats having a backrest and seat cushions and movable between upright and reclined positions . . . ,

a fixed console disposed in the double reclining seat sofa section between the pair of reclining seats and with the console and reclining seats together comprising a unitary structure, said console including an armrest portion for each of the reclining seats; said arm rests remaining fixed when the reclining seats move from one to another of their positions,

Claim 1 (cont’d)

and a pair of control means, one for each reclining seat; mounted on the double reclining seat sofa section . . . .

“Object of the invention” language

From the specificiation

Specification

“In this case, the original disclosure clearly identifies the console as the only possible location for the controls. It provides for only the most minor variation in the location of the controls, noting that the control “may be mounted on top or side surfaces of the console rather than on the front wall . . . Without departing from this invention.”

“[T]he only discernible purpose for the console is to house the controls. As the disclosure states, identifying the only purpose relevant to the console, “[a]nother object of the present invention is to provide . . . a console positioned between [the reclining seats] that accommodates the controls for both of the reclining seats.”

Purpose of the invention

Thus, locating the controls anywhere but on the console is outside the stated purpose of the invention.

Support for claims . . .

We agree with Berkline that the patent’s disclosure does not support claims in which the location of the recliner controls is other than on the console. Whether a specification complies with the written description requirement of §112, ¶1, is a question of fact, which we review for clear error on appeal from a bench trial. – IPNTA p. 198

Purpose (cont’d)

Thus, locating the controls anywhere but on the console is outside the stated purpose of the invention.

“[A]lthough not dispositive, because one can add claims to a pending application directed to adequately described subject matter, Sproule [the inventor] admitted at trial that he did not consider placing the controls outside the console until he became aware that some of Gentry’s competitors were so locating the recliner controls.”

IPNTA – p. 198

Sproule’s broadest original claim was directed to a sofa comprising, inter alia, ‘‘control means located upon the center console to enable each of the pair of reclining seats to move separately between the reclined and upright positions.’’

“Misappropriation by claim amendment”

Merges, Software and Patent Scope: A Report from the Middle Innings, 85 Tex. L. Rev. 1528 (2007).

Enabled?

See discussion:

• What is the relationship between enablement and written description?

Patent Specification

Enabled

Described

Claim 1Original

Application

Enabled subject matter: everything the inventor teaches to one of skill in the art.

Described embodiments of the invention: everything the inventor “adequately describes” to one in the art; everything the inventor shows she is in “possession of” or contemplates as embraced by her invention

Claim 2Claimed in C-I-P or amended application

Specification

Specification Re-filed

Enabled

Described

Claim 1Original

Application

If the inventor re-files the specification at a later date, she cannot claim what the first filing enabled but failed to describe.

Enabled

Described

Claim 2

What’s claimable?

Dedicated to the Public

Original Description

Taught by Patent

Claimable by original inventor

Competitor

CompetitorCompetitor

Gentry Gallery v. Berkline Corp.

Enabled

Described

Claim 1

Specification for Gentry patent

Enabled: 2 reclining seats in a sectional sofa; controls not located on arms of chair

Described: pair of reclining seats in a sectional sofa with a fixed console that houses the control means

Claimed: pair of reclining seats in a sectional sofa, a fixed console, and a pair of controls.