Written Description II

1
Written Description II

• Prof Merges
• Feb. 4, 2008

2
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.
Gentrys Patent
3
US Pat. No. 5,064,244
4
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 . . . ,

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• 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,

6
Claim 1 (contd)

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

7
Casebook p. 305

• 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.

8

• The only discernible purpose for the console
  is to house the controls. As the disclosure
  states, identifying the only purpose relevant to
  the console, another 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.

9
Casebook, p. 306

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

10
P. 306

• Although 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 Gentrys
  competitors were so locating the recliner
  controls.

11
Univ of Rochester v. Searle

• Univ. of Rochester v. GD Searle Co., 358 F.3d
  916 (Fed. Cir. 2004)

12

• Traditional non-steroidal anti-inflammatory drugs
  ("NSAIDs") such as aspirin and ibuprofen . . .
  are believed to function by inhibiting the
  activity of enzymes called cyclooxygenases.
  Cyclooxygenases catalyze the production of a
  molecule called prostaglandin H2, which is a
  precursor for other prostaglandins that perform
  various functions in the human body

13

• Patent in suit, owned by University of Rochester,
  was for a method of treating inflammation using
  inhibitors of prostaglandin H synthase-2 (PGHS-2)
  enzyme activity, also known as COX-2

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(No Transcript)
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Claim 1 850 Patent

• 1. A method for selectively inhibiting PGHS-2
  activity in a human host, comprising
  administering a non-steroidal compound that
  selectively inhibits activity of the PGHS-2 gene
  product to a human host in need of such
  treatment.

16

• Claimed method of using a compound acting upon a
  polypeptide did not comply with the written
  description requirement where such a compound was
  not disclosed.
• Spec. did not disclose which, if any, compounds
  selectively inhibit PGHS-2

17
850 Patent Spec

• The present invention provides a simple in vitro
  system for the screening of drug actions on both
  the constitutive and the inflammatory
  cyclooxygenase, which will be useful for the
  development of drugs that selectively inhibit
  inflammation without producing the side effects
  due to inhibition of constitutive prostaglandin
  production.

18
District court opinion

• The '850 patent neither discloses any actual
  Cox-2 inhibiting compound nor provides any
  suggestion as to how such a compound could be
  made or otherwise obtained other than by
  trial-and-error research. Indeed, the court found
  no evidence in the '850 patent that the inventors
  themselves knew of any such compound at the time
  their patent application was filed.

19
Federal Circuit opinion

• Enablement and WD separate requirements
• Relationship? confused!!

20
Bottom line

• Without such disclosure of specific peptides,
  etc. selectively inhibit Cox 2 the claimed
  methods cannot be said to have been described.

21
Lizardtech v. ERM424 F.2d 1336 (Fed. Cir. 2005)

• Data compression technology
• Mathematical transforms used to convert and
  compress data, stored as arrays
• If the correct transform is chosen, the majority
  of the information is stored in a relatively
  small portion of the array.

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(No Transcript)
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Lizardtech

• Once we have chosen DWT as the transform, how do
  we implement DWT quickly and efficiently?

24

• DWT works by splitting the image data using two
  filters. The low pass filter retains the low
  frequency data, such as broad areas of color.
  The high pass filter retains the high frequency
  data, such as edges and textures.

25

• The prior art centers the filter on each element
  in the tile. The Lizardtech method also centers
  the filter on elements outside the tile that have
  been set to 0. This is a means of calculating
  not only the coefficients for the tile loaded
  into memory, but also the effect of that tile on
  later calculated coefficients. In effect, the
  sums are broken up and calculated in pieces.
  This results in a seamless transform that is
  exactly the same as if DWT had been run on the
  entire, unbroken image.

26

• ERM Uses a Continuous Sliding Window Approach
  This technique never breaks up or tiles the
  image. so it does not introduce any edge
  artifacts. Instead, it relies on the critical
  observation that contrary to what was previously
  thought, the DWT process does not need to
  generate the entire intermediate images before
  generating the output sub-band images. The
  newly-patented ERM method uses this observation
  to perform a standard prior art DWT technique,
  but does so by structuring the data flow to
  ensure that only the minimum amount of data
  required is stored in memory at any one time.

27

• The problem is that the specification provides
  only one method for creating a seamless DWT,
  which is to "maintain updated sums" of DWT
  coefficients. That is the procedure recited by
  claim 1. Yet claim 21 is broader than claim 1
  because it lacks the "maintain updated sums"
  limitation. Thus, a person of ordinary skill in
  the art would understand that claim 21 is
  directed to a seamless DWT. But because there are
  no limitations in claim 21 as to how the seamless
  DWT is accomplished, claim 21 refers to taking a
  seamless DWT generically.

28

• The trouble with allowing claim 21 to cover all
  ways of performing DWT-based compression
  processes that lead to a seamless DWT is that
  there is no support for such a broad claim in the
  specification. The specification provides only a
  single way of creating a seamless DWT, which is
  by maintaining updated sums of DWT coefficients.
  There is no evidence that the specification
  contemplates a more generic way of creating a
  seamless array of DWT coefficients. . . . P. 324

29
Guardian Industries Corp. v. AFG Industries,
Inc.2006 WL 2691387E.D.Mich.,2006.

• Technology layer coatings placed on glass which
  seek to reflect infrared radiation while enabling
  a high amount of visible light transmittance.
  Guardian's patent claims to be the "first patent
  to teach oxidation gradation in the coating
  layers adjacent to the reflective (e.g.silver)
  layers on the glass."

30
Guardian

• The court believes that the Gentry case is
  distinguishable. The broadest originally filed
  claim in Gentry required the controls to be on
  the center console, but later in the prosecution
  the patentee broadened the claims to cover its
  competitor's product, i.e. not on the console.

31
Guardian

• Guardian did not amend its clams to broaden them
  beyond the scope of what was originally disclosed
  in the patent application. The original 37-43
  claims and 70-78 claims of the '349 parent
  application do not require the coated article to
  include a layer of oxidation graded NiCrOx. Thus,
  this is not the situation where a patentee later
  broadens his/her claims after the filing of the
  original application.

32
Guardian

• These pages expressly convey to one of ordinary
  skill that the inventors were "in possession" of
  a coated article comprising a layer of silicon
  rich silicon nitride that did not require a layer
  of oxidation graded NiCrOx. at 9.