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When analyzing written description in interference, claims construed according to patent copied from

By McKee, Voorhees & Sease, P.L.C.

In a recent decision, the Federal Circuit reversed a district court's grant of summary judgment in a § 146 action brought after an interference proceeding at the USPTO.  The district court agreed with the Board's decision to award priority to the senior party in the interference, granting the senior party's motion for summary judgment that its specification satisfied the written description requirement for the interference count.  In coming to this conclusion, the district court construed the count by reference to the specification of the senior party's application, rather than by reference to the specification of the junior party's issued patent.  The district court also determined the proper standard of review was for substantial evidence, holding the junior party did not advance any "meaningful evidence" apart from what was considered by the Board.

The Federal Circuit reversed.  The court determined the district court erred both with regard to its determination that 1) the claims should be construed in light of the host application whose written description was being challenged and 2) that evidence proffered to the district court was insufficient to require de novo determination of the facts under § 146.  The court reconciled two prior decisions, In re Spina and Rowe v. Dror, dealing with the proper source for claim construction in an interference.  As described by the court:

[W]hen a party challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language.  When a party challenges a claim's validity under § 102 or § 103, however, [the Federal Circuit] and the Board must interpret the claim in light of the specification in which it appears.

Applying this law, the court construed the count in light of the proper specification.  In light of the revised construction, the Federal Circuit reversed the district court's grant of summary judgment that the senior party's disclosure met the written description requirement and remanded with instructions to enter summary judgment for the junior party.

More detail of Agilent Techs., Inc. v. Affymetrix, Inc. after the jump.

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Full post as published by FileWrapper on June 16, 2009 (boomark / email).