Patents Invalidated for Lack of Written Description

On May 21, 2018, the Federal Circuit, in an opinion authored by Judge Wallach, ruled that patent owner D Three could not claim priority from U.S. Patent Application No. 61/150,301 (“the 2009 Application”), affirming the U.S. Federal District Court for the District of Colorado. D Three Enterprises, LLC v. SunModo Corp., Nos. 2017-1909, 2017-1910, 2018 (Fed. Cir. May 21, 2018)(Before Reyna, Clevenger, and Wallach, J.).

D Three Enterprises had sued SunModo Corp. and Rillito River Solar (doing business as EcoFasten) in the District of Colorado for infringement of various claims of alleging infringement of various claims of U.S. Patent Nos. 8,689,517 (“the ‘517 patent”), 9,068,339 (“the ‘339 patent”), and 8,707,655 (“the ‘655 patent”), which are directed to roof mount sealing assemblies. The allegedly infringing products were available to the public in June 2009 and 2010. To sustain its claim for patent infringement, D Three claimed priority to the 2009 Application, the parent application for the patents-in-suit. The parties agreed that the patents would be invalid without the benefit of the 2009 Application.

SunModo and EcoFasten filed a motion for summary judgment, arguing that D Three could not claim priority to the 2009 Application because the claims of the asserted patents were broader than the invention disclosed in the 2009 Application. The district court agreed, finding that the asserted claims lacked written description support in the earlier 2009 Application.

The district court divided the asserted claims into two categories: claims that (1) did not recite a washer; and (2) claims that did. The district court compared the disclosure for each category of claims in the 2009 Application with the patents-in-suit. Both disclosed washerless assemblies, but the 2009 Application required a W-pronged attachment bracket and the patents-in-suit allowed any type of bracket. Both also disclosed a washer, but in the 2009 Application the washer was “above the flashing” and in the asserted claims was “below the flashing.” The district court determined that the asserted claims were invalid because they lacked written description support in the 2009 Application and could not claim the benefit of the 2009 filing date.

D Three appealed, arguing that the 2009 Application adequately disclosed (1) washerless assemblies with various attachment brackets and (2) assemblies with washers below the flashing. D Three also argued that the district court violated Rule 56(f) because SunModo and EcoFasten did not specifically argue that the 2009 Application lacked written descriptions support for washerless assemblies with any type of attachment bracket.

The 2009 Application disclosed one washerless assembly, consistently described as having only one type of attachment bracket—a no. 1700 attachment bracket with W-shaped prongs. The washerless assemblies claimed by the patents-in-suit were not attachment brackets with W-shaped prongs. In other words, the 2009 Application disclosed a species of attachment brackets and the patents-in-suit claimed the genus of attachment brackets. A POSA reading the 2009 Application would not recognize that any attachment bracket could be used in washerless assemblies. Boilerplate language in the specification, for example, providing that the patent covers all “modifications, permutations, additions and sub-combinations” that a POSA would recognize as within the spirit and scope of the claims is not sufficient to show written description support.

Because the patents-in-suit broadly claimed washerless assemblies with any type of attachment bracket, the claims were not supported by the 2009 Application and could not claim the benefit of the earlier effective filing date.

The district court did not violate Rule 56(f) by deciding the written description issue on summary judgment. The court may grant a motion for summary judgment on grounds not raised by a party if the parties are given notice and a reasonable time to respond. The motion for summary judgment gave notice that SunModo and EcoFasten were relying on the theory that the patents claimed “different, broader” inventions than the 2009 Application. D Three was on notice that it needed to present its entire argument and evidence why the patents-in-suit could claim the benefit of the earlier effective filing date and had ample opportunity to respond. D Three did respond in its reply and at the hearing on the motion for summary judgment.

Further, the 2009 Application lacked written description support for assemblies with washers below the flashing. The 2009 Application disclosed a washer only above the flashing and did not show an adequate written description of what the inventor claimed, a washer above or below the flashing.

Because the parties stipulated that the patents-in-suit would be invalid if they could not claim benefit of the 2009 Application’s effective filing date, the Court affirmed the district court’s grant of summary judgment.

Take Away

Disclosure of one way to attach or position a roof assembly (a species) did not provide an adequate written description of other ways to attach or position the assembly (a genus or different species).  Boilerplate language that a patent covers all modifications, permutations, additions, and sub-combinations of the disclosed invention that a POSA would recognize as within the language of the claims is not sufficient to show possession of a specifically claimed combination.

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Copyright: Thanee Hengpattanapong