Enablement and Written Description

Intro to IP – Prof Merges

Jan. 19, 2012

Golan v. Holder, Jan. 18, 2012

• http://www.supremecourt.gov/opinions/11pdf/10-545.pdf

• Reinstatement of copyrights for thousands of foreign works under 1997 Act of Congress does not violate Patent and Copyright clause, or the 1st Amendment

U.S.C. § 112: ¶ 1

Disclosure/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 Elements

Rotating 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.

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?

“Undue Experimentation” Standard

[H]ow would it be possible for a person to know what 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. . . .

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

Enabled: Carbonized paper, plus?

Enablement Principles

The thing(s) you have actually built; “picture claim”

Enablement Principles

The thing(s) you have actually built; “picture claim”

The limits of what you legally enable

U.S.C. § 112: ¶ 1

Disclosure/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.

Ariad: background

• NF-kB: gene expression stimulator

• Researchers discovered its structure and how to block its effects

Why is this important?

• NF-kB is the most important stimulating factor that causes inflammation

• So inhibiting – or controlling, reducing the effects of – NF-kB reduces inflammation

How does NF-kB Work?

• NF-kB works as a signal. It (1) enters the nucleus of a cell, from outside the cell; (2) then stimulates production of proteins by signaling to the DNA that it needs to produce these proteins – which can cause inflammation and other negative symptoms

• Production of proteins is called “transcription”

Blocking Transcription

• The key is to figure out the “binding sites” where an external signaling factor such as NF-kB attach or “bind to” the DNA strand and tell it to start producing (inflammatory) proteins

80. [A method for modifying effects of external influences on a eukaryotic cell, which external influences induce NF-kB-mediated intracellular signaling, the method comprising altering NF-kB activity in the cells such that NF-kB-mediated effects of external influences are modified, wherein NF-kB activity in the cell is reduced] wherein reducing NF-kB activity comprises reducing binding of NF-kB to NF-kB recognition sites on genes which are transcriptionally regulated by NF-kB.

The claims are thus genus claims, encompassing the use of all substances that achieve the desired result of reducing the binding of NF-kB to NF-kB recognition sites. Furthermore, the claims, although amended during prosecution, use language that corresponds to language present in the priority application. . . . The specification also hypothesizes three types of molecules with the potential to reduce NF-kB activity in cells: decoy, dominantly interfering, and specific inhibitor molecules. -- Book supp. P. 61

Ariad’s reading of 112:• The specification shall contain• [A] a written description• [i] of the invention, and• [ii] of the manner and process of making and using

it,• [B] 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 ...

Lilly’s reading

(1) “The specification shall contain a written description of the invention, and ”

(2) “The specification shall contain a written description ... 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 ” . . . .

We agree with Lilly and read the statute to give effect to its language that the specification “shall contain a written description of the invention” and hold that § 112, first paragraph, contains two separate description requirements: a “written description [i] of the invention, and [ii] of the manner and process of making and using [the invention”]. 35 U.S.C. § 112, ¶ 1 …

What is the requirement?“possession as shown in the disclosure” is a more

complete formulation. Yet whatever 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.

For example, a generic claim may define the boundaries of a vast genus of chemical compounds, and yet the question may still remain whether the specification, including original claim language, demonstrates that the applicant has invented species sufficient to support a claim to a genus.

although written description and enablement often rise and fall together, requiring a written description of the invention plays a vital role in curtailing claims that do not require undue experimentation to make and use, and thus satisfy enablement, but that have not been invented, and thus cannot be described. For example, a propyl or butyl compound may be made by a process analogous to a disclosed methyl compound, but, in the absence of a statement that the inventor invented propyl and butyl compounds, such compounds have not been described and are not entitled to a patent.

See In re DiLeone, 58 C.C.P.A. 925, 436 F.2d 1404, 1405 n. 1 (1971) (“[C]onsider the case where the specification discusses only compound A and contains no broadening language of any kind. This might very well enable one skilled in the art to make and use compounds B and C; yet the class consisting of A, B and C has not been described.”).

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 2

Claimed 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.

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:

Enabled? Described?

“Misappropriation by claim amendment”

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