With only a passing reference to its recent Ariad decision concerning the written description requirement, the U.S. Court of Appeals for the Federal Circuit reversed a district court’s decision, holding that the lower court erred in finding that the specification of an earlier patent contained sufficient descriptive text to support the continuation patent at issue. Anascape, Ltd. v. Nintendo of America, Ltd., Case No. 08-1500 (Fed. Cir. Apr. 13, 2010) (Newman, J.) (Gajarsa, J. concurring).
The patent-in-suit is entitled “3D Controller with Vibration” and was filed as a continuation-in-part of a patent entitled “Image Controllers with Sheet Connected Sensors.” Anascape argued that the patent-in-suit was entitled to the earlier filing date of the parent, while Nintendo argued that the parent specification did not provide a written description of the invention. Anascape conceded that, if the patent-in-suit was not entitled to the parent’s filing date, intervening patents belonging to Sony would make it subject to invalidation. The parent claimed “a single input member that operates in six degrees of freedom,” while the patent-in-suit claimed “controllers having multiple input members that together operate in six degrees of freedom.” Nintendo argued, and the Federal Circuit agreed, that everything in the parent specification pertained only to claims directed to a single input member and that those passages that were not directed only to the single input member were amended in the year 2000, after the intervening Sony products. While Anascape claimed that the changes were not “new matter,” the Federal Circuit stressed that a description “can be broadened by removing limitations.”
The Court held that, while the jury found by special verdict that the patent-in-suit’s claims were not invalid on written description grounds, the jury verdict form asked whether the patent-in-suit “fail[ed] to satisfy the written description requirement,” not whether the parent specification satisfied the written description requirement for the patent-in-suit’s claims. Finding that the patent-in-suit’s claims are not entitled to the parent’s 1996 filing date, the Court entered a judgment as a matter of law that the judgments of validity, infringement and award of damages be reversed.
Judge Gajarsa echoed his recent concurrence in Ariad, praising the court for its use of § 112, ¶ 1 in this opinion. While Judge Newman made only a passing reference to Ariad in her opinion, Judge Gajarsa took the opportunity to “highlight the majority’s best use of the written description requirement as a priority-policing mechanism in contradistinction to an independent basis for invalidity.” Judge Gajarsa further emphasized his belief that confining written description to the priority context would provide greater clarity to district courts and practitioners, especially in light of written description being treated as a question of fact, while enablement is treated as a question of law.
Practice Note: Despite the en banc decision in Ariad, it appears that the last word from the Federal Circuit on how to use the written description requirement in validity questions may yet be to come.