AIPLA Reports

A Periodic Notification of AIPLA Activities and
Current Developments in Intellectual Property Law
Copyright © 2010 AIPLA

March 23, 2010

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• En Banc CAFC Confirms Written Description as Separate from Enablement
• Bill Is Signed to Harmonize Affidavit Requirements for U.S. and Madrid Applications
• SG Urges Supreme Court Not to Take First Sale Copyright Case

Patents/Written Description
En Banc CAFC Confirms Written Description as Separate from Enablement
Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., Fed. Cir., No. 2008-1248, 3/22/2010.

Section 112, first paragraph of the Patent Act requires that a patent specification not only describe the manner of making and using a claimed invention, but also separately requires a written description of the claimed invention itself, the en banc Federal Circuit held March 22, 2010, in a 9-2 decision.

Judge Alan Lourie’s opinion for the Court was joined by Chief Judge Michel and Judges Newman, Mayer, Bryson, Gajarsa, Dyk, Prost, and Moore.  Judge Newman filed an opinion with additional views, and Judge Gajarsa filed a concurring opinion; Judges Rader and Linn filed opinions dissenting-in-part and concurring-in-part and joining each others brief.

The Court rejected the argument that the required written description of the invention is only for purposes of identifying what is to be enabled, concluding that the statutory phrase “to enable” pertains only to the required description of making and using the invention.  If Congress meant to require only a description of enablement, the statute would have been written differently, Judge Lourie pointed out.  He added that the Patent Act has always required a description of the invention as a basic element of the quid pro quo bargain for exclusive rights.

The Court also concluded that Supreme Court case law has long recognized a requirement for separate written descriptions, which presents no conflict with the function of a patent claiming system.  Judge Lourie noted that patent claims serve to define the boundaries of the exclusive rights, whereas the invention and the manner of making and using it are taught by the written descriptions.

The decision to retain the 40-year old law on written description was also influenced by the doctrine of stare decisis and the need to avoid disrupting settled expectations about the law.  If a change is needed, despite sound policy, uniform holdings, and established PTO practice, Judge Lourie wrote, it would be for Congress to make such a change.

The Court acknowledged problems with testing the sufficiency of a written description by inquiring whether the inventor “possessed” the claimed subject matter, and explained that the better inquiry is whether there was “possession as shown in the disclosure.  As for the detail of the written description, that feature depends on the nature and scope of the claims and on the complexity and predictability of the technology.

Judge Lourie also addressed the complaint that the present system disadvantages the “basic research” that takes place in university settings.  The complaint is misplaced, he said, because patent laws are directed to useful arts, not to academic theories, no matter how ground breaking or necessary to later patentable inventions.

In applying the legal standard to the facts of this case, the court’s opinion at pp. 30-38 is virtually identical to the panel opinion at pp. 8-16.

Additional Opinions

Judge Newman’s additional views also focused on the attempt by Ariad to vindicate the protectability of basic research with a challenge to the written description requirement.  While conceding it is a close question, she sided with the Court’s view that the absence of any specific example of the claimed method was a failure of Ariad’s written description.

Judge Gajarsa concluded that reasonable people can disagree over the interpretation of the statute, but he was satisfied with the way the Court’s opinion settled the question.  “Yet, this thicket is the result of our best efforts to construe an ambiguous statute; only Congress wields the machete to clear it,” he wrote.

Judge Rader’s opinion and Judge Linn’s opinion prefer the Ariad statutory interpretation that finds an enabling written description to be sufficient without the need for the invention itself to be described for its own sake.  Judge Linn specifically finds no justification in describing the invention other than for making priority determinations; Judge Rader complains that the Court’s written description requirement is subjective and unpredictable.

To read the opinions in this case, click here.

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Legislation/Trademarks
Bill Is Signed to Harmonize Affidavit Requirements for U.S. and Madrid Applications

President Obama on March 17, 2010, signed legislation (S. 2968; Pub. L. 111-146) to extend to domestic trademark registration applicants the ability to cure deficient affidavits that is permitted under the Madrid Protocol. 

The legislation creates a new Section 71(a)(3) of the Lanham Act, 15 U.S.C. §1141k(a)(3), to provide a 6-month grace period for filing an affidavit of continued use for a Madrid Protocol extension of protection.  This provision would to conform the maintenance and renewal of Madrid Protocol extensions to the same schedule and procedure applied to regular U.S. registrations, for which a 6-month grace period already exists under the current Section 8(c)(1) of the Lanham Act, 15 U.S.C. §1058(c)(1).

In addition, the legislation amends Section 71(c) of the Lanham Act, 15 U.S.C. §141k(c), to allow deficient affidavits filed under the Madrid Protocol to be corrected after the statutory time period.  There already exists in the current Section 8 (c)(2) of the Lanham Act, 15 U.S.C. §1058(c)(2), a provision for correcting deficient affidavits for regular U.S. registrations, and this proposal would simply create a corresponding provision for Madrid extensions of protection.

Finally, the legislation requires the Commerce Department, in consultation with the Intellectual Property Enforcement Coordinator, to study and report to Congress on the extent to which small businesses may be harmed “by litigation tactics by corporations attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.”

To read the Senate floor proceedings on S. 2968, click here.

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Copyrights/First Sale
SG Urges Supreme Court Not to Take First Sale Copyright Case
Costco Wholesale Corp. v. Omega S.A., U.S., No. 08-1423, 3/17/10.

The Solicitor General has told the Supreme Court that the Ninth Circuit correctly held that the Copyright Act first sale defense at 17 U.S.C. §109(a) is not available where the copies are made in a foreign country and subsequently sold by a third party without the copyright owner’s permission.  It thus advised the Court to deny review in a case involving a copyright claim to a logo on an imported watches as a means of blocking the importation.

According to the brief, the Ninth Circuit ruling is not inconsistent with the Supreme Court’s holding in Quality King Dist. Inc. v. L’anza Research Int’l, Inc., which found that the first defense did apply to imported hair care products based on the copyrighted packaging.  Unlike the facts of this case, which involve foreign-made and foreign sales, Quality King involved goods originally made in the U.S., sent to the copyright owner’s distributor, and ultimately resold by a third party on the gray market without permission. In a concurring opinion to that case, Justice Ginsburg emphasized the “round trip” journey of the copies from the U.S. to places abroad and back again.  She noted that the court was not resolving whether the first sale doctrine applies to infringing imports manufactured abroad.

To read the Solicitor General’s brief in this case, click here.

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