Entitlement to the benefit of an earlier-filed application date requires that the missing descriptive matter must be present in the original application’s specification such that one skilled in the art would recognize such a disclosure.

The patent-in-suit was filed on November 16, 2000 as a continuation-in-part of an earlier filed patent filed on July 5, 1996. The validity of the patent-in-suit depended on whether the asserted claims were entitled to the filing date of July 5, 1996. The patentee conceded that if it was not entitled to the earlier priory date, the patent-in-suit was subject to invalidation based on intervening prior art. The district court ruled the patent-in-suit was entitled to the July 5, 1996 filing date and, therefore, was valid and infringed.

On appeal, the Federal Circuit found to obtain the benefit of the July 5, 1996 parent application, the claims of the later-filed patent-in-suit must be supported by the written description requirement in sufficient detail that the skilled artisan could conclude that the inventor invented the claimed invention as of July 5, 1996. To establish the patent-in-suit’s filing date as July 5, 1996, the patentee made several references to the figures, claims, and specification of the parent application and argued the citations were sufficiently broad to encompass the asserted claims against the accused infringer. The Federal Circuit found that the patentee’s references failed to provide written description support for the later filed patent-in-suit. In fact, in filing the patent-in-suit, the court noted several instances where the specification was amended to recite features the applicant was now asserting against the accused infringer. The court found these changes to the specification of the patent-in-suit as substantial and deemed it classic new matter.

Finally, the patentee argued the parent application was simply a preferred embodiment and the inventors did not disclaim the broader scope of the patent-in-suit. Yet, the Federal Circuit found the question was not whether the patentee in the parent application “disclaimed” the scope of the patent-in-suit; rather the issue was whether the parent application sufficiently described the later-claimed subject matter to entitle the asserted claims to the July 5, 1996 filing date.

The court found the patent-in-suit was not entitled to the July 5, 1996 filing date of the parent application and the judgment of validity and infringement were reversed.

A copy of the opinion can be found here.