In probably the most significant case since In re Bilski, the en banc Federal Circuit in Ariad Pharmaceuticals v. Eli Lilly is about to ponder two questions: (1) is there a separate and distinct “written description” requirement in the first paragraph of 35 U.S.C. § 112?; and (2) if there is, what does it mean? My answer to the first question is an emphatic “yes”, unless you want to overrule the 1996 case of In re Alton which clearly says that the “written description” requirement is ”distinct from the enablement and best mode requirements.” My answer to the second question is that the “written description” requirement fixes what the inventor(s) actually demonstrated and considered their invention to be at the time the patent application was filed (also known as the “what did the inventor(s) actually possess?” view).
Now for some truly heretical thoughts. After reviewing the briefs of the parties, several amicus briefs, and the original panel decision in Ariad where a majority found that satisfaction of the “written description” was lacking (Judge Linn concurred but based on lack of “enablement”), it has now dawned on me that another issue in the first paragraph of 35 U.S.C. § 112 is being glossed over: what “level of skill” is the “written description” requirement to be judged against? The briefs of the parties, the amicus briefs and the panel decision would have you believe that it is “one of ordinary skill in the art.” There’s just one problem: that’s not what the first paragraph of 35 U.S.C. § 112 says. Instead, the first paragraph of 35 U.S.C. § 112 says “any person skilled in the art to which it [the invention] pertains.”
So how did we get from “any person skilled in the art” to “one of ordinary skill in the art”? After doing some investigating, I’ve traced the appearance of “one of ordinary skill in the art” as the standard for judging the “written description” requirement at least as far back as the 1989 case of In re Gosteli: “the description must clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed (emphasis added).” What’s even worse is that the Federal Circuit precedent isn’t always consistent on what the “level of skill” is when it comes to the first paragraph of 35 USC § 112. For example, the 1991 case of Vas-Cath, Inc. v. Mahurkar makes no mention of “ordinary skill”: “the applicant must . . . convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention (emphasis added).” Ironically, these statements from Gosteli and Vas-Cath appear next to one another in the Alton case.
And the “written description” requirement isn’t the only place where the “level of skill” issue comes up in the first paragraph of 35 USC § 112. In spite of the first paragraph saying “any person skilled in the art,” the Federal Circuit has also judged the “enablement” requirement against an “ordinary skill in the art” standard. One recent example is the 2007 case of Automotive Technologies v. BMW of North America where a Federal Circuit panel said the following: “That general description [in the patent specification], however, fails to provide a structure or description of how a person having ordinary skill in the art would make or use an electronic side impact sensor (emphasis added).”
So why has the “any person skilled in the art” been translated by the Federal Circuit to mean “one of ordinary skill in the art”? A very plausible explanation is that the “level of skill” standard of 35 USC § 103 has simply “crossed-over” into the first paragraph of 35 USC § 112. (The “definiteness” of claims under the second paragraph is also usually judged by Federal Circuit precedent against a “one of ordinary skill in the art” standard, even though the “level of skill” is never mentioned in the second paragraph). Put differently, “ordinary” is read into the first paragraph of 35 USC § 112 by the Federal Circuit as a reasonable qualifier for “any person.” But my problem with the Federal Circuit making that “leap of logic” is this: why didn’t Congress just say “one of ordinary skill” (rather than “any person skilled”) in the first paragraph of 35 USC § 112, which was, after all, enacted at the same time as 35 USC § 103?
So what does (or should) “any person skilled in the art” really mean in the first paragraph of 35 USC § 112? In my opinion (tongue in cheek with no case law precedent to guide me) is that “any person skilled in the art” suggests a standard that may not be “ordinary skill” but is at least some other minimal level skill. What that “minimal level skill” might be is anyone’s guess and is certainly going to be dependent on what the “art (field)” is.
Circling back to the Ariad case, the “any person skilled in the art” standard (whatever it means) clearly applies to the “enablement” requirement. But should that standard also be applied to the “written description” requirement? Ah, a potential paradox is revealed! If the “written description” requirement is truly separate and distinct from the “enablement” requirement, perhaps the “any person skilled in the art” standard doesn’t (and shouldn’t be) applied to the “written description” requirement. So then what “level of skill” standard does apply to the “written description” requirement? That question might create a conundrum more perplexing than the two questions now before the en banc Federal Circuit in the Ariad case
*© 2009 Eric W. Guttag.
Join the Discussion
16 comments so far.
Noise above LawDecember 9, 2009 09:35 pm
Please indulge yourself with a modicum of patent knowledge prior to posting on patent blogs. Otherwise you appear extremely foolish.
Rick PetersonDecember 9, 2009 03:15 pm
Oh yes, isn’t KSR the case holding “could’a, would’a, should’a” is the new standard to obviate issued patents?
Noise above LawDecember 9, 2009 07:44 am
“which seems the current trend.”
on which planet? Did the omniscience of KSR bypass you?
Rick PetersonDecember 8, 2009 10:31 pm
One skilled in the art, is one who is above ordinary skill in the art. That person is not some dolt of minimal skill in the art. Patent law cannot be reduced to the lowest common denominator, which seems the current trend.
Gerald PrettymanDecember 7, 2009 09:37 am
Noise above Law – thank you for catching that.
Noise above LawDecember 7, 2009 07:52 am
Please note that the link above grabs the period after “pdf”. Eliminate the period in the url to get to Gerald’s article.
Gerald PrettymanDecember 6, 2009 07:46 pm
Alas, we revisit another convolution of ‘possession’ and the “evolving written description doctrine.” These are not going away anytime soon. I wrote almost 40 pages on this quagmire. See “The “Evolving Written Description Doctrine” and the Search for Specificity (A.K.A. Adequacy is the Matter of Invention.),” 1 J. Bus., Entrepreneurship & L. (2007). Also available at http://www.grpjrlaw.com/JBELv1p1-42.pdf.
EGDecember 4, 2009 08:04 am
Noise above Law,
Thanks for posting Ned Heller’s comment here. Here was my reply Ned’s second sentence in the first paragraph:
“A very astute observation about the history of utility claims in the 19th Century. These old-style utility claims looked very much like modern-day design claims (e.g., “the device substantially as shown and described.”) In other words, the patent specification took on even greater significance in the old days. Again, good comment..”
Noise above LawDecember 3, 2009 05:17 pm
I may not always agree with Ned, but he does attempt to cogently argue his points (most of the time), so with some liberty, I will repost a Patently-O item here:
EG and Paul, “adequate description” seems more akin to the problem of claim 8 in O’Reilly v. Morse. It generally arises from functional claiming and involves whether the description enables one to make and use everything claimed. I think the “written description of the invention” prong of Section 112, p.1, was initially placed in the statute at a time when there were no claims in order to distinguish what the inventor invented from what was old. See. the Evans v. Eaton cased from 1822. It then andd presumably now had nothing to do with enablement.
What may happen therefor is the Feds may limit the written description of invention requirement of Section 112, p.1 to what the Supremes always said it was and not to what it has become in the Fed. Cir. This may require Ariad to win.
Posted by: Ned Heller | Dec 03, 2009 at 04:55 PM
Noise above LawDecember 3, 2009 03:52 pm
I had a chance to give a quick review to the Cotropia link.
Quick impression: I’m leaning away from the Ariad viewpoint on the historical side. HOWEVER, I am appalled at the plain English construction of Prof. Cotropia. Not only is the offering completely lacking in persuasive power, but the construction offered is so PAINFULLY forced that it is an affront to my language sensibilities. If the liberties taken with the contorted language interpretation are representative of the diligence to an unbiased and accurate viewpoint, I would be forced to much more carefully review and possibly heavily discount the historical points.
EGDecember 3, 2009 01:12 pm
“Some food for thought: In re Alton should be overruled”
Noise above Law,
Thanks for the comment. Your reasoning is cogent so I respect you for expressing your opinion. Note also that my emphatic “yes” is based on In re Alton not being overruled.
Unfortunately for your and Ariad’s argument, the issue of “written description” being a separate and distinct requirement goes back even before Alton, to at least as early as the O’Reily v. Morse, and perhaps even earlier. Chris Cotropia who is an IP law professor at my school (University of Richmond) has submitted an excellent amicus brief (can be retrieved at http://patentdocs.typepad.com/files/amicus-brief—chris-cotropia.pdf ) which documets the “case law history” (including SCOTUS precedent) which shows that the “written description” has existed as a separate requirement since the earliest patent statutes. Given the Federal Circuit’c current adversion to going contrary to SCOTUS, it’s almost a given that the en banc Federal Circuit will rule that there is a separate and distinct “written description” requirement (there won’t be unanimity on this point as at least Judge Linn and I believe also Judge Rader don’t accept a separate and distinct “written description” requirement).
What is likely to cause some diverging views in en banc Federal Circuit in Ariad is what does the “written description” requirement mean. Like Chris Cotropia, I view it from the “what did the inventor(s) actually possess/invent?” standpoint. But the problem has been in the biotech area (especially biotech subject matter defined in terms of functionality), starting with the University of California v. Eli Lilly case, where the “written description” requirement began to include another component which I called (after the Enzo Biochem v. Gen-Probe case) the “adequate description” prong: was the invention “adequately described” in the specification so that one skilled in the art would know what it is? In fact, those in the biotech field feel discriminated against in how the “written description” requirement appears to be applied differently to the biotech claims.
Judge Lourie has certainly been the biggest advocate of the “adequate description” prong in the biotech area. My problem is with how Judge Lourie applies the standard of review to “written description” issues. “Written description” is considered a question of fact (unlike “enablement” which is considered a question of law). That means the standard of appellate review for “written description” should be the “clearly erroneous” or “substantial evidence” standard. But Judge Lourie, in practice, treats the issue of “written description” as if it was “de novo,” i.e., a question of law standard.
Again, thanks for expressing your opinion. BTW, we share a common distaste for the views of MM and 6.
Gene QuinnDecember 3, 2009 12:02 pm
It should be live now. Anytime a URL is in the post it awaits moderation. With regulars I just approve it, but that set up give me a chance to prevent spam comments.
I hope all is well.
Noise above LawDecember 3, 2009 09:55 am
please check the filter for a reply of mine to EG. The post passed the CAPTCHA Code, but has not appeared.
EGDecember 3, 2009 07:38 am
Nice comment. As you note, there’s more to the first paragraph of 35 USC 112 than initially meets the eye. And Cheers to you.
Noise above LawDecember 3, 2009 06:11 am
“My answer to the first question is an emphatic ‘yes’, unless you want to overrule the 1996 case of In re Alton which clearly says that the ‘written description’ requirement is ‘distinct from the enablement and best mode requirements.’ ”
Some food for thought: In re Alton should be overruled.
isn’t that precisely what the Ariad brief indicates to do? Isn’t the premise of the Ariad brief that the courts have grafted a “possession” requirement where the plain language of the statute does not actually have one?
If instead of an emphatic “yes”, one indulges the view of the Ariad brief, then does the question posed here, being “a conundrum more perplexing than the two questions now before the en banc Federal Circuit in the Ariad case” even exist? If the now infamous comma is allowed to serve its plain language gramatical function, the imposed insufficiently self-standing clause would not need to find its own standard. In fact, the question posed here actually reinforces the view that the courts have indeed grafted a requirement not contemplated by the legislature into 112 paragraph 1.
I have mentioned on the Trainwreck blog that I recognize that there is more than one path to law, and that this appears to be a case where the paths do not align. The Judicial law making and the Legislative law making are different. My actual comment was:
The legislative Law harkens to Ariad’s case. However, Lilly has made a substantial argument that judicial Law has trumped legislative Law. The intent of the separate written description is admirable, but it is an incorrect reading of the pure word of Law.
The purist in me is torn, as I recognize both that Law is made legislatively as well as made judicially, and this appears to be a battle of ascendency – which Law is more “right”. At this point I lean ever so slightly to Ariad based on the ultra-thin construction of the first question to the court, and I am reminded of a wise man’s view when faced with alleged ambiguity in the letter of the Law – ask yourself, what does the letter of the Law actually say.
The court is faced with the choice of acting in a deterministic fashion or an interpretive fashion. Lilly and its amici artfully conflate the two, asking the court to interpret past judicial determinism (and staying away from the source).
I do suspect that the Federal Circuit will not have the last word on this, and fear that in part, their decision will be put together like the abomination of Bilski, not in a ruling that can stand on its own; but rather, as a tee for the Supremes to take a whack.
step backDecember 2, 2009 09:57 pm
Let’s go one level deeper in the inquiry:
Does “any person skilled in the art to which it [the claimed invention] pertains” mean the person as skilled before he reads the spec or after he reads the spec?
I suggest that it must be: after he reads the spec because sometimes a pertinent “art” does not exist until after a pioneering inventor creates the art and discloses it to the next skilled artisan.