Intellectual Property Directions

In a seeming paradox, in the magic world of patent filings it is possible to “enable” your invention - that is, explain to someone of skill in your field how to make or use your invention - and yet not fully meet the written description requirement for obtaining a patent (or at least patent coverage for all aspects of your invention). Orlando Lopez, a partner at Burns & Levinson, was kind enough to provide an example where this was an issue:

In a 1971 case again involving chemical subject matter, the court expressly stated that “it is possible for a specification to enable the practice of an invention as broadly as it is claimed, and still not describe that invention.” [**15] In re DiLeone, 58 C.C.P.A. 925, 436 F.2d 1404, 1405, 168 U.S.P.Q. (BNA) 592, 593 (1971). As an example, the court posited the situation “where the specification discusses only compound A and contains no broadening language of any kind. This might very well enable one skilled in the art to make and use compounds B and C; yet the class consisting of A, B and C has not been described.”

Admittedly it is rarely the case, but it certainly shows an internal, logical inconsistancy. It seems to me, in this case, that compounds B and C, being enabled for one skilled in the art, should at least be covered by the doctrine of equivalents, assuming the patent was covering a process for making A.

Similarly, I would expect that a separate patent application for compounds B and C, made by this process, would be tossed out as either anticipated or obvious in light of the patent in this case.

In the same vein, had the enabling description for making compound A in this patent been presented in a journal more than a year before filing, would compounds B and C run into the prior disclosure bar? Seems to me it all needs to hang together.

And it certainly will depend on what the patent specification in question is actually trying to cover. If I come up with a new paint in which oxidized metallic flakes provide some new and beneficial property and enable the process of incorporating the flakes uniformly, but I only describe red paint based on iron (known to look red), should my patent bar someone from using oxidized copper flakes to make green paint? I would think/hope it would!

[This example begs another question - could someone else get a patent on the green paint that I enabled but didn't describe? Admittedly it would be dominated by my patent, but it would bar me from making green paint.]

Conventional wisdom dictates “Make your claims as broad as possible” but some inventors and their attorneys seem to forget that, broad or narrow, the claims have to define the invention you have, not the invention you wish you had. In a recent case, Liebel-Flarsheim Company overplayed their hand by filing (and getting) overly broad claims, made a losing bet by suing Medrad for infringing, and capped it all off by doubling down with an appeal in which their patent was ruled infringed but invalid.

Liebel’s invention was a fluid injector with a pressure jacket to contain the high pressures involved. At some point in the prosecution of their patent application someone got the bright idea that they could get broader protection by leaving out some of the limitations in their claims (a truth); they removed all references in the claims to the pressure jacket. The patent examiner allowed the claims.

The patent examiner did them no favor. When Liebel sued Medrad, they first lost the claims construction battle (the judge decided that the claims required the pressure jacket) but then won the appeals battle (the CAFC said NO pressure jacket was required). Based on the new claims construction, the district court concluded that Liebel’s patent was infringed (by the jacketless Medrad device) but that the claims were invalid because Liebel had failed to comply with the written description and enablement requirements!

This conclusion was to be expected - Liebel had never successfully made a jacketless system; their engineers testified that the use of a jacket was not a mere design option and that one of skill in the art would not know how to make a jacketless system; the specification described jacketless systems as “impractical“; the inventors had tried unsuccessfully to produce a jacketless system and that it was “too risky” to pursue further.

Yet, in spite of this understanding of the limits of the invention, in spite of having filed all claims with the limitation of a pressure jacket, Liebel and its patent attorney decided to delete these limitations from the claims and get a patent on the invention they wish they had invented.

Although I put most of the blame on Liebel’s patent attorneys, I also blame the patent examiner for allowing claims for which there was little or no support in the specification - no matter how loudly the patent attorneys cried.

Remember, to paraphrase Don Rumsfeld, you have to go to the patent office with the invention you have, not the invention you want.