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LizardTech II : the written description controversy continues

In response to a request for rehearing, the U.S. Court of Appeals for the Federal Circuit, in a per curium order, has denied a petition for en banc rehearing of its earlier decision, LizardTech, Inc. vs. Earth Resource Mapping Inc, and Earth Resource Mapping Ltd. ( IP Update, Vol. 8, No. 10, LizardTech I ), which held that patent claims broader than the patent's specification fail to provide an adequate written description under 35 U.S.C. § 112 1.  In doing so, the Court exposed a wide range of irreconcilable views held by members of the Federal Circuit on the law pertaining to § 112 1.  LizardTech, Inc. v. Earth Resource Mapping Inc., and Earth Resource Mapping Ltd. , Case No. 05-1062 (Fed. Cir. Jan. 5, 2006) (per curium) (concurrence by Lourie, J., Michel, C.J. and Newman, J. joining) (dissent by Rader, J., Gajarsa, J. joining) (Linn, J., dissenting) (LizardTech II).

In LizardTech I , the Court invalidated a claim for failing to meet the requirements of § 112 1.  First, the Court compared the specification and claims at issue to determine whether the claims fell within the scope of the specification.  Finding the claims were broader than the specification, the Court asked whether the specification included enough detail to "convince a person of skill in the art that the inventor possessed the invention and to enable such a person to make and use the invention without undue experimentation." The panel in LizardTech I found that the patent failed to meet the requirements of § 112 1 on both counts.

In LizardTech II, the concurrence saw little reason to disturb the status quo. It emphasized the written description requirement's role in ensuring that the inventor discloses his or her invention to the public, arguing that the written description requirement remains distinct from the enablement requirement. The concurrence also rejected the notion of a technology neutral standard for determining when a patent's written description is adequate, writing, "[c]ompliance with the written description requirement has been held to be a question of fact, so what constitutes an adequate written description depends on what is claimed and what is described." 

Although "claims may vary from the specification," the concurrence argued that they may not be interpreted beyond the written description, "otherwise they would be interpreted to cover inventions or aspects of an invention that have not been disclosed." Further reinforcing the weight it placed on the specification, the concurrence also contended that a patent lacking other embodiments or disclosures, may be limited to the embodiments disclosed, even where such embodiments are not explicitly designated as "preferred."

In his dissent, Judge Rader urged en banc reconsideration of the written description requirement and vociferously objected to the majority's approach, writing that it merely contributed to a confusing and murky line of cases, rather than providing a much needed "neutral standard of application" for the written description doctrine.  The dissent felt the Court's written description doctrine had departed from the original role of § 112 1, which was to guard against new matter. 

Most importantly, the dissent found the analysis used in the concurrence troubling in light of JVW Enterprises (IP Update, Vol. 8, No. 11 ) and Phillips (IP Update, Vol. 8, No. 10).  In Phillips , the en banc Court emphasized the preeminence of the claim language in claim construction, while explicitly warning against importing limitations from the specification into the claims.  The Court in JVW , following Phillips , rejected a proposed claim construction because it would improperly limit claim language to the specific embodiment disclosed in the written description. Struggling to reconcile the two cases, the LizardTech II dissent wrote: "Of course, the unsatisfying solution to the puzzle is simple: while JVW considered principles of claim construction in light of this court's recent en banc clarification of claim construction, LizardTech dealt with this court's evolving written description doctrine."