On April 1, 2011, the Federal Circuit issued another decision regarding the written description requirement. In Crown Packaging v. Ball Metal, No. 2010-1020 (Fed. Cir. April 1, 2011), the Federal Circuit analyzed a district court's decision holding that certain claims of the Crown patent were invalid for violating the written
The patent at issue pertained to an invention for seaming metal cans. The district court held that the asserted claims covered driving a chuck either inside or outside of the reinforcing bead for seaming the can, but the specification only supported driving a chunk outside of the can end's reinforcement bead. Thus, according to the district court, the specification did not support the claims in the patent because the specification only taught "outside," while the claim covered both "outside" and "inside." The patent therefore was invalid.
The Federal Circuit began its analysis by focusing on the written description requirement in 35 U.S.C. § 112. It then discussed the test for sufficiency of a written description, i.e., "whether the disclosure clearly allows persons of ordinary skill in the art to recognize that the inventor invented what is claimed," and stated that the "critical question is whether the specification, including the original claim language demonstrates that the applicants had possession of an embodiment that improved metal usage by increasing the slope of the chuck wall without also limiting the width of the reinforcing bead." In rejecting the district court's analysis, the Federal Circuit found that the written description in the Crown patent supported the asserted claims.
In reaching this conclusion, the Federal Circuit relied on its decision in Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1367 (Fed. Cir.2009), holding that it is a "false premise that if the problems addressed by the invention are related, then a claim addressing only one of the problems is invalid for lack of sufficient written description." The Federal Circuit went on to conclude that the specification was not limited to "outside" because the specification taught that driving can occur either inside or outside of the reinforcing bead if one does not elect to limit the width of the reinforcing bead. The Federal Circuit also noted that although the drawings in the specification only showed driving "outside," as the drawings were only a practical
example of the invention, they did not limit the patent.
In dissent, Judge Dyk disagreed with the majority opinion. Judge Dyk wrote that "[u]nder our written description precedent, failure to disclose a claimed invention is fatal to a claim's validity." Judge Dyk found that the specification did not teach the claims in the patent and therefore the claims were not valid.
The Crown Packaging decision illustrates that the Federal Circuit continues to address the written description requirement and not always with unanimity. As a result, there are likely to be further decisions on the written decision requirement and will continue to be a subject of additional litigation.
The authors of www.PatentLawyerBlog.com are patent litigation lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.