Federal Circuit Finds Sufficient Written Description In Species/Genus Disclosure Case
On March 14, 2018, the United States Court of Appeals for the Federal Circuit (“CAFC”) ruled that a patent that discloses a technological species (“a fibre optics bundle”) provides written-description support for claims directed to a technological genus (“a light guide”). Hologic, Inc. v. Smith & Nephew, Inc., appeal no. 2017-1389. The opinion presents the inverse of the situation in the Knowles case summarized in last week’s Litigation Weekly.
Smith & Nephew, Inc. (“S&N”), together with Covidien LP, owns United States Patent No. 8,061,359. The patent claims priority to a PCT application that has nearly, but not exactly, the same specification as the patent. The U.S. patent claims an apparatus that includes a “channel having a light guide permanently affixed therein.” The original specification did not use the words “light guide;” instead, it literally described only “a fibre optics bundle.” During prosecution, the examiner rejected the “light guide” claim for lack of written description support, and the applicant responded by amending the “fibre optics bundle” section of the specification to add explicit mention of a light guide. The new text is underlined here: “a light guide, such as a fibre optics bundle ….”
Hologic requested the Patent Office undertake an inter partes reexamination (not an inter partes review) of the patent. Hologic argued that the amendment to the specification constitutes new matter, that the original specification in the PCT application does not include written description of “a light guide,” and that therefore the PCT application is invalidating prior art to the patent. The examiner agreed, and S&N appealed to the Patent Trial and Appeal Board, which reversed the examiner and found that the original application did provide a sufficient written description of “a light guide.” Hologic then appealed the Board’s decision to the CAFC.
In its opinion, the CAFC observed “that the parties do not dispute that a ‘fibre optic bundle’ is a type of light guide,” and that the parties also do not dispute “that various types of light guides were well-known in the art.” The CAFC concluded from these undisputed facts that the original specification “reasonably conveys to a person of ordinary skill in the art that the inventor had possession of a light guide,” and affirmed the Board’s decision.
The CAFC thus held that disclosure of a species (in this case, a fibre optics bundle) was sufficient written description to support a genus (in this case, all light guides). The Knowles case described in last week’s newsletter presented the inverse situation, with disclosure of a genus and a claim to a species, and the Knowles opinion concluded that a genus disclosure does not provide written description support for a claim to a species, even if the species was well known to those of skill in the art. Taken together, the two CAFC opinions illustrate that—in some cases—it can be easier to broaden claims during prosecution than it would be to narrow them, which may be a counterintuitive result.
It is important to note that both of these cases concerned the written-description requirement, not the enablement requirement. It is possible that, even though a genus claim would have sufficient written-description support from a species disclosure, it would still be susceptible to challenge on a full-scope-enablement theory.