By Kevin E. Noonan —

The three members of the "high technology"
community named above have weighed in on the Federal Circuit's en banc review of the written
requirement and provide their own unique perspective on a debate that has raged
primarily in the biotechnology sector over the past several years (see amicus brief).  These companies are clear that they not
only believe there is a separate written description requirement, but that it
serves an important and unique purpose in preventing "overreaching"
by patentees.  And they are equally
clear that limiting or abandoning the written description requirement would
exacerbate the litigation difficulties they face that have motivated them to
promote sweeping "reform" of U.S. patent law.

These concerns arise in the amici's Statement of
Interest:

Having obtained a
number of patents based on their own extensive research and development
efforts, and having also been improperly charged with infringing others'
patented technology, amici have a strong interest in a fair and rational
patent system.  Amici have seen up close the important role that the
written description requirement plays in reducing uncertainty and distinguishing
legitimate from abusive patent applications.

Moreover:

Because the written
description requirement serves the vital purpose of reducing uncertainty posed
by ambiguous claims, its evisceration would stifle the very innovation the
patent laws are designed to encourage.  Such uncertainty creates opportunities
for speculative patent litigation that plagues high-technology companies and
diverts resources from research and development to legal budgets.  This problem
would get markedly worse if the written description requirement were
eliminated.

And reducing the requirement to enablement would
not suffice:

The purposes of the
written description requirement are not adequately served by the separate
enablement requirement, in part because enablement takes account of not only
the patent's specification, but also additional knowledge of a person skilled
in the art.  For that reason, an "invention" might be enabled by a
specification even if the patent applicant had not thought of it or intended to
claim it at the time the patent application was filed.

Perhaps wisely, the first section of the brief
essays Supreme Court precedent relating to the importance of the written
description as a requirement under U.S. patent law from the first years of the
Republic, citing Grant v. Raymond
(1832), Evans v. Eaton (1822) (the
written description must "put the public in possession of what the party
claims as his own invention") and O'Reilly
v. Morse (1853).  These cases
all stand for the same principle, they assert, that the written description is "the
cornerstone of the quid pro quo
underlying all patent rights:  a patent holder is entitled to exclusivity for a
period of years, but only for things the applicant actually invented and
disclosed to the public."  This focus on the correspondence between the scope of the claims and the
extent of the disclosure (and how the written description requirement acts to
ensure the correspondence thereof) is the principal theme of the brief.  The brief does not limit its citation
of precedent to 19th Century cases, citing Schriber Schroth Co. v. Cleveland Trust Co. (1938) for the
principle that "the patent monopoly does not extend beyond the invention
described . . . it cannot be enlarged by claims in the patent not supported by the description."  This citation supports their argument that the Court
has recognized a separate written description requirement, since in the Schriber Schroth case the patent was
invalidated because the accused infringing article "'was not the invention
which [the patentee] described' in the specification."  Morse
is cited for the same proposition, whereby amici argue that Morse's claims that
were invalidated sought to include "'a manner and process which he ha[d]
not described and indeed had not invented, and therefore could not describe
when he obtained his patent'."  Also cited is Festo Corp. v.
Shoketsu Kinzoku Kogyo Kabuchiki Co., where the Court opined that "the
patent application must describe, enable, and set forth the best mode of carrying
out the invention."  (Indeed, in view of the Federal Circuit's almost
obsequious adherence to Supreme Court precedent recently — in cases such as In re Bilski and in response to the
Court's decisions in KSR International Co. v. Teleflex Inc.
and Medimmune, Inc. v. Genentech, Inc.), this
argument may provide the majority with a rationale to let the Supreme Court
decide the question by merely upholding the status
quo.)  According to amici, this
statement "reinforces" the conclusion that the statute contains
separate enablement and written description requirements.  They also cite Festo as requiring that "[w]hat is claimed by the patent
application must be the same as what is disclosed in the specification;
otherwise the patent should not issue" (which they argue the Court found
to be a requirement separate and distinct from "the other requirements –
enablement and best mode – of §112").

Amici take the opportunity in this portion of the
brief to address — and rebut — Ariad's contention that the Supreme Court's
earlier precedent stemmed from the form of patents prior to the 1836 Act,
whereby patents did not include "peripheral" claims — i.e., that the
Court's emphasis on the description was due to inventions being described
solely by the description in the patent.  This argument does not refute the clear indication in Schriber-Schroth, Morse, and Festo, they
argue.  Nor has anything been
changed in the current form of the statute, according to amici, here refuting
the "misplaced comma" argument advanced by Ariad (that proper
sentence construction makes significant the comma following the word "invention"
in the portion of the statute that reads:  "The specification shall contain
a written description of the invention, and of the manner and process of making
and using it, . . .").  According to this portion of amici's
argument, Ariad's construction would render superfluous the phrase "and of
the manner and process of making and using it," because if the intent was
merely to require enablement, the remainder of the statutory language would
accomplish that without this phrase.  Since statutory construction eschews interpretations that make language
mere surplusage, amici argue that Ariad's interpretation must be erroneous.

The next portion of the argument regards the role
of the written description requirement in preventing patentees from claiming
what they have not invented.  This
behavior takes two forms:  first,
advocating claim construction that extends beyond what is supported by the
specification, and second pursuing claims that likewise are beyond the scope of
what the inventors have invented.  The
risk of abolishing the written description requirement would be to encourage
patentees to "disclose narrowly and claim broadly," say amici.  The consequence according to amici would
be "[a] zone of uncertainty which enterprise and experimentation may enter
only at the risk of infringement claims [that] would discourage invention only
a little less than unequivocal foreclosure of the field," citing United Carbon Co. v. Binney & Smith Co.
(1942).  This ambiguity is a real
threat, the amici assert, because claims and their interpretation do not "provide
reasonable certainty."  Citing
the Federal Circuit's Phillips v. AWH
Corp. and Exxon Research & Eng'g
Co. v. United States, they argue that even claims that are not "insolubly
ambiguous" can give rise to "difficult issue[s] of claim
construction," and that the specification is the source of public notice
of what a patent "does and does nor claim."

These amici then argue that they have had "first
hand experience with the problems stemming from overbroad and ambiguous patent
grants."  They cite academic
commentary to the effect that software patent claims are particularly difficult
to properly construe and that "[n]umerous ambiguous patent claims are asserted
against amici and other high tech companies each year."  Indeed, they state that the very
possibility that claims may be broadly construed "inflates the valuation"
of such patents (citing Lemley and Shapiro, 2005) and they cite the FTC Report
(2003) and Michael Heller's book (2008) that the need to confront "the jaw
dropping number of patents" impedes innovation (under the current interpretation of the written
description requirement).  This
situation makes difficult if not impossible the task of determining whether there is freedom to
operate, and that "technology
companies are regularly forced to defend against litigation involving patents with
ambiguous claim scopes."  Litigation, of course, is costly, and these costs "divert resources
from innovation" and represent "wasteful transaction costs."  The role of the written
description requirement in mitigating such adverse consequences in "critical,"
amici argue.  Indeed, that it
may be difficult to accurately put into words the metes and bounds of patent
claims "is a reason to require more description, not less," they
say.  And citing Schriber-Schroth, this is why the
Supreme Court has required a written description "to ensure that the
patent grant does not exceed the inventor's disclosed contribution."

In addition to the role of the written description
requirement to proscribe construction of claims that exceeds the extent of the
disclosure in the specification, amici argue that the requirement also prevents
an applicant from "abusing" amendment and continuation practice in
the Patent and Trademark Office.  Such abuse was famously the thesis of Professor Lemley and (now) Federal
Circuit Judge Moore and was the theoretical underpinning of the Office's
ill-fated and now-withdrawn claim and continuation rules that were the subject
of judicial challenge in Tafas v. Kappos.  Amici argue that the written
description requirement is the guardian against such "overreaching"
by patent applicants.  They cite
the practice of "seemingly endless continuations" made (according to
them) "in order to hold them open for future amendments."  (Like Lemley and Moore, amici fail to
recognize that such continuations are frequently necessary, especially in
complex arts like biotechnology, to obtain claims having a scope appropriate to
the applicant's written description and to which their specification entitles
them.)  They also argue that
applicants assert the right (purportedly improperly) to submit claims in such
continuation applications that encompass subject matter not disclosed in the
specification and in fact developed by their competitors.  "[T]he amendment and continuation
practice, without the discipline of the written description requirement,
engenders significant potential for abuse" they argue, citing another
Lemley and Moore paper on the subject.  This role for the written description requirement is supported by amici
with a quotation from Schriber-Schroth,
that "the patent . . . cannot be enlarged by claims in the patent not
supported by the description."

In another savvy argument, amici contend that
Congress has endorsed this aspect of the written description requirement when
establishing the priority right for provisional, divisional, and continuation
applications:  in each instance the
statute requires that a priority date will be granted only if the invention is
disclosed in the manner provided by the first paragraph of section § 112 (35
U.S.C. § 119(e)(1) and 35 U.S.C. § 120).  They further argue that these statutory provisions
refute Ariad's assertion that Congress intended the written description
requirement to be limited to "subsequent and not original claims,"
since the priority requirements in the statute do not differentiate between
claims present in the application as filed and those submitted by amendment
thereafter.

Amici then rebut Ariad's argument that other
sections of the statute — notably, the enablement provisions of § 112 — can be
sufficient to satisfy the proper limitation on claim scope.  In addition to arguing that such
an interpretation is contrary to proper statutory construction principles and
prior Supreme Court precedent, amici distinguish the roles of the enablement
and written description requirements based on the scope of the considerations
applied to determine compliance with each of them.  Written description analysis is confined to what is
contained within the four corners of the patent document, they argue, while
enablement also takes into consideration what is known to one having ordinary
skill in the art.  Once again
citing Schriber-Schroth, amici argue
that a specification may "enable" an invention "even if the
patent applicant never thought of it and never meant to claim it,"
something that is particularly likely in the "more predictable arts such
as engineering and computer programming."  They cite both Gentry
Gallery and Tronzo (the most
(in)famous non-biotech written description cases) as examples of instances
where what was enabled is greater in scope than what was disclosed.  In addition to requiring the enablement
statute to "take more weight than it can bear," amici argue that
Section 101's "overbreadth doctrine" would also be implicated in
addressing sufficiency of disclosure questions raised by elimination of the
written description requirement, citing as an example the test enunciated in Gottschalk v. Benson.  However, this test "has not always
proven easy to apply," they say, and "there would be costs to
overburdening that test."  In
short, amici argue that there is "no reason to turn to other doctrines to
take the place of the foundational written description requirement."

In the final portion of the brief, amici argue that
if there have been problems associated with application of the written
description requirement to biotechnology claims, the solution is to address
these problems by improving application of the requirement to such claims
rather than "jettisoning the longstanding requirement altogether."  They cite a dozen cases concerning "claims
of all stripes" that the Federal Circuit has held invalid since 2006 in
support of their argument that the written description requirement has not been
confined merely to biotechnology claims:  In
re Reiffin, 199 F. App'x. 965,
2006 WL 2860589 (Fed. Cir. 2006) (multithreading computer application); Adang v. Umbeck, No. 2007-1120, 2007 WL 3120323 (Fed. Cir. Oct. 25, 2007)
(transformed cotton plantlet); Zenon Envtl.,
Inc. v. U.S. Filter Corp., 506 F.3d 1370
(Fed. Cir. 2007) (ball bearings); Ziarno
v. Am. Nat'l. Red Cross, 55 F. App'x.
553, 2003 WL 57060 (Fed. Cir. 2003) (internet-based fundraising system); McMullin v. Carroll, 153 F. App'x. 738, 2005 WL 2840281 (Fed. Cir. 2005) (golf shoe
cleat); LizardTech, Inc. v.
Earth Res. Mapping, Inc., 424 F.3d 1336
(Fed. Cir. 2005) (method for eliminating edge artifacts); Energizer Holdings, Inc. v. ITC, 275 F. App'x. 969, 2008 WL 1791980 (Fed. Cir.
2008) (mercury free alkaline batteries); In
re Curtis, 354 F.3d 1347 (Fed.
Cir. 2004) (dental floss); McKechnie
Vehicle Components USA, Inc. v. Lacks Indus., Inc., 122 F. App'x. 482, 2005 WL 121840 (Fed. Cir.
2005) (automobile wheel covering); PIN/NIP,
Inc. v. Platte Chem. Co., 304 F.3d
1235, 1248 (Fed. Cir. 2002) (tuber sprout growth inhibitor); Williams v. Gen. Surgical Innovations, Inc., 60 F. App'x. 284, 2003 WL 932449 (Fed. Cir.
2003) (removal of tissue expander during
surgery).

Interestingly, amici note that Ariad does not cite
a single biotechnology case that had
been decided incorrectly based on an application of the written description
requirement except its own.  Ariad
argues that the claims in earlier biotechnology cases may have been invalid on
enablement grounds, something Judge Linn (in concurring on the panel majority's
opinion) opined may also be the case for Ariad's claims.  In this regard they make an
important point:  the written
description requirement is a question of fact, and fact-based inquiries "will
necessarily vary depending on the nature of the invention claimed," citing
Enzo Biochem Inc. v. Gen Probe Inc.  "Even if Ariad were correct that this Court's
written description jurisprudence had been too rigid for some biotechnology
inventions, the solution would be to apply the requirement more contextually,
on a case-by-case basis, to such inventions — not to eviscerate completely this longstanding
and foundational requirement for all inventions."

In a brief colored
heavily by their own industry's particular concerns, these amici raise for the Federal Circuit's analysis several important considerations that apply (perhaps to
varying degrees) to all technologies.

For additional information regarding this topic, please see:
• "Amicus Briefs in Ariad v. Lilly:  Professor Christopher Holman," November 19, 2009
• "Lilly Files Principal Brief for Ariad v. Lilly Rehearing En Banc," November 16, 2009
• "Next Up: Ariad v. Lilly Rehearing En Banc," November 10, 2009
• "Federal Circuit Grants En Banc Review in Ariad v. Lilly," August 21, 2009
• "Ariad Files Petition for Rhearing in Ariad v. Lilly," June 3, 2009
• "Ariad Decision Voids Attempt to Use Broad Claiming to Avoid the Written Description Requirement," April 14, 2009
• "Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co. (Fed. Cir. 2009)," April 6, 2009