Federal Circuit Rejects Written Description Analysis That Ignored Relevant Factors
Before Moore, Reyna, and Stoll. Appeal from the Patent Trial and Appeal Board.
Summary: Written description support for a claimed genus depends on the criticality or importance of the expressly disclosed species and the predictability of the relevant technology. Global IP Holdings, LLC (Global) owns U.S. Patent No. 8,690,233 directed to carpeted automotive vehicle load floors. The ’233 patent claims a load floor with thermoplastic skins and a thermoplastic cellular core. Global filed a reissue application seeking to broaden the claims, replacing the term “thermoplastic” with “plastic.” Global submitted a declaration stating that use of plastic other than thermoplastic for vehicle load floors was known in the art at the time of the invention.
The Examiner rejected the claims, arguing that the change from “thermoplastic” to “plastic” introduced new matter. Global argued that disclosure of thermoplastic (species) supported the claiming of plastics (genus) since (1) the type of plastic used was not critical to the invention and (2) plastics other than thermoplastics were a predictable option. The Board affirmed the examiner’s rejection, finding that “regardless of the predictability of results of substituting alternatives, or the actual criticality of thermoplastics in the overall invention, [Global’s] Specification, as a whole, indicates to one skilled in the art that the inventors had possession only of the skins and core comprising specifically thermoplastic.” Global appealed.
The Federal Circuit found that the Board applied an incorrect legal standard. The court held that the level of detail required to satisfy the written description requirement varies depending on the “predictability of the relevant technology,” among other factors. Further, the court held that “criticality or importance of the expressly disclosed species may be relevant to whether an inventor had possession of a claimed genus.” Because the Board failed to evaluate these factors, the Federal Circuit vacated the Board’s decision and remanded with instructions for the Board to address them.
Editor: Paul Stewart