Did the CAFC Miss the Real “Written Description” Issue in Crown Packaging?

After the Federal Circuit ruled in Ariad Pharmaceuticals v. Eli Lilly there is a separate and distinct “written description” requirement in the first paragraph of 35 U.S.C. § 112, some may have thought that all might be quiet on the “written description” front.  But the recent case of Crown Packaging Technology, Inc. v. Ball Metal Beverage Container Corp., suggests that all may no longer be quiet on that front.  In fact, I’ll express the “heretical” view that the Federal Circuit missed the real “written description” issue in this case, namely what is (or should be) the impact of the “characterised in that” (or as we Americans would phrase it “characterized in that”) language used in the common patent specification of the two patents involved in this case.

In Crown Packaging, U.S. Pat No. 6,935,826 (the ‘826 patent) and U.S. Pat. No. 6,848,875 (the ‘875 patent) which shared a common patent specification were asserted to be infringed by Ball Metal Beverage Container Corporation (“Ball Metal”).  The ‘826 patent covered a metal can end to be joined to a can body in making, for example, beverage cans.  The ‘875 patent covered the corresponding method for joining the can end to the can body.  Of particular relevance are FIG. 2 (illustrating the prior art), as well as FIGS. 4 and 5 (illustrating the claimed invention), of the ‘826 patent shown below:

The common patent specification “identifies and discusses two ways to save metal when seaming can bodies and can ends.”  One is by increasing the slope of the chuck wall of the can end (also referred to as the “can end wall”) to between 30^o and 60^o (see, for example, angle C^o in FIG. 4 above), versus only about 12^o in the prior art can end wall (see angle C in FIG. 2 above).  The other is by limiting the width of the anti-peaking reinforcing bead (see bead D in FIG. 2 above) to less than 1.5 mm (see bead 25 in FIG. 5 above, and especially the distance between each set of vertical lines for d2 and d1 in FIG. 4 above which represents the width of bead 25).

As can be seen in FIG. 5 above, chuck 30 (having chuck body 31 and drive surface 32) engages drive surface 32 outside (i.e., beyond vertical lines d2 of bead 25) of the reinforcing bead (the “outside” embodiment), but not inside (i.e., within vertical lines d1 of bead 25, the “inside” embodiment) of the reinforcing bead.  In fact, none of the FIGS. in the ‘826 patent illustrate this “inside” embodiment.

This of lack of an illustration of the “inside” embodiment became the basis for the district court invalidating (on summary judgment) both the ‘826 patent, as well as the ‘875 patent, for failing to satisfy the “written description” requirement.  (The ‘826 and ’875 patents were also invalidated for anticipation.)  A majority of the Federal Circuit panel (District Court Judge Whyte, sitting by designation, and Judge Newman) reversed, holding that the “common [patent] specification conveys to one of ordinary skill in the art that the patentee was in possession of the asserted claims” (e.g., Claim 14 of the ‘826 patent and Claims 50 and 52 of the ‘875 patent).

The essential contention on “written description” between the parties came down to whether the common patent specification taught two separate solutions for improving metal usage (the patentee’s contention) or two interrelated solutions (Ball Metal’s contention).  The majority opinion accepted the patentee’s contention that “nothing in the specification requires employment of both [solutions] in all instances.”  The majority opinion also disagreed with Ball Metal’s contention that the holding in the prior 2009 Revolution Eyewear, Inc. v. Aspex Eyewear, Inc. case was inapplicable when the “prior art problems are related to one another.”

Judge Dyk dissented, arguing (correctly in my opinion) that the “specification does not teach combining the sloped can end wall together with the wider, prior art bead and driving the chuck into the bead instead of the sloped can end wall.”  As Judge viewed it, that “combination is a new and distinct invention, and our written description jurisprudence requires that it be described in the specification.”  Even so, I would have agreed with majority opinion but for one significant (and unrecognized) “fly in the ointment” that I’ll now address.

In my view, both the majority opinion, as well as Judge Dyk’s dissent, miss the real “written description” problem in Crown Packaging which has nothing to do with whether the common patent specification illustrates both solutions to the prior art problem.  Instead, it relates to the follow description (see column 1, line 62 to column 2, line 5 of the ‘826 patent) at the end of the sentence stating how the claimed invention solved the problem of using less metal in the can end:  “characterized [or “characterised” depending on which version of the ‘826 patent you use] in that, the chuck wall is inclined to an axis perpendicular to the exterior of the central panel at an angle between 30^o and 60^o and the concave [i.e., the reinforcing] bead narrower than 1.5 mm (0.060”).”

For those familiar with European (EPO) style claiming, the “characterized in that” language is the common way to separate out that which is “new” (and thus novel) from that which is “old” (and thus prior art).  As also those of us who practice on this side of the Atlantic Ocean know (and fear), using such “characterized in that” language in any patent claim (or even the patent specification) is now extremely dangerous as at least being an admission that the “old” is truly prior art, and only that which is after the “characterized in that” language is, in fact, the “new” (novel) stuff.  (Given that the ‘826 and ‘875 patents claim priority from a British patent application, it’s also not that surprising that this European style language appears in the common patent specification.)

By implication, this “characterized in that” language strongly suggests that claimed invention, to achieve using less metal, requires both increasing the slope of the chuck wall angle, as well as using the narrower width reinforcing bead.  (This “narrower width reinforcing bead” language appears not in Claim 14, but in the dependent Claim 5 of the ‘826 patent.)  That no one, and I mean no one, including the parties in this suit, discusses (or even recognizes) the implications of this “characterized in that” language on the “written description” requirement boggles my mind.  That failure becomes even more bizarre when you consider the following statement from the majority opinion:  “Nowhere does the specification teach that metal savings can only be achieved by increasing the chuck wall angle along with narrowing the reinforcing bead.”

With all due respect, this statement from majority opinion is simply not correct if you consider the “characterized in that” language in the common patent specification, and especially what it implies as to the need for the claimed invention to have both features (increasing the slope of the chuck wall angle, as well as the narrowing the width of the reinforcing bead) to achieve reduced metal usage.  Also, the majority opinion’s reference after this statement to what is shown in the Tables 1-6 doesn’t help make this statement correct.  If the “characterized in that’ language means what it appears to say (and says what it appears to mean), what the inventors of the ‘826 (as well as the ‘875) patents contemplated their invention to be (and what they were “in possession of” for “written description” purposes) requires both these features to be present in the claimed invention.

Again, I would have agreed with the majority opinion in Crown Packaging that the “written description” requirement had been satisfied if this “characterized in that” language wasn’t in the common patent specification.  It might also have helped if the description of these two features in the claimed invention had been phrased clearly in the alternative (“or”) somewhere else in the common patent specification.  But what really troubles me is that no one, be it the majority opinion, the dissenting opinion, or even the parties, addresses what this “characterized in that” language means in Crown Packaging, and especially what impact it should have in determining whether (or not) the “written description” requirement was satisfied.  (P.S.:  one lesson to be learned from Crown Packaging is to never, I repeat, never use the European style “characterized in that” language anywhere in a U.S. patent specification.)