The Written Description Requirement May Be Satisfied Even When the Claimed Invention Solves Only One of the Problems Addressed by a Patent
April 01, 2011
Last Month at the Federal Circuit - May 2011
Judges: Newman, Dyk (concurring-in-part, dissenting-in-part), Whyte (author sitting by designation)
[Appealed from: S.D. Ohio, Judge Rice]
In Crown Packaging Technology, Inc. v. Ball Metal Beverage Container Corp., No. 10-1020 (Fed. Cir. Apr. 1, 2011), the Federal Circuit reversed the district court’s SJ determination that the asserted claims were invalid for failure to satisfy the written description requirement and found that the claims were supported by an adequate description. In addition, the Court reversed and remanded the district court’s SJ determination that the claims were invalid as anticipated because a question of fact remained as to whether an element of the claimed invention was inherently disclosed in the prior art.
Crown Packaging Technology, Inc. and Crown Cork and Seal USA, Inc. (collectively “Crown”) sued Ball Metal Beverage Container Corp. (“Ball”) for infringement of U.S. Patent Nos. 6,935,826 (“the ’826 patent”) and 6,848,875 (“the ’875 patent”). The patents share a common specification that identifies and discusses two ways to save metal when seaming can ends (lids affixed to the top of beverage cans) and can bodies (cylindrical hollow containers to which can ends are attached for filling). The common specification teaches that “improvements in metal usage can be made by increasing the slope of the chuck wall and limiting the width of the anti peaking bead.” The specification describes increasing the slope of the can end’s chuck wall (also referred to as the “can end wall”), thus creating a less steep chuck wall (as compared to prior art chuck walls) and reducing the use of metal in the manufacturing of the can end. Additionally, the specification teaches that metal can be saved by “limiting the width of the anti peaking bead” (also known as the reinforcing bead). To avoid causing damage to the chuck or reinforcing bead, damage which might otherwise result from narrowing of the bead, or other potential manufacturing problems, the specification discloses a new seaming method employing a modified seaming chuck that does not drive deeply into the anti peaking bead.
After construing the claims, the district court granted Ball’s SJ motion, holding that the claims were invalid for violating the written description requirement. Specifically, the district court held that the asserted claims cover driving a chuck either inside or outside of the reinforcing bead, but the common specification only supports driving a chuck outside of the can end’s reinforcing bead. In addition, the district court granted Ball’s SJ motion for anticipation by a prior art Japanese patent application, finding that Crown’s expert did not address the specific anticipation argument raised by Ball’s expert.
On appeal, Crown and Ball agreed that the common specification teaches that improvements can be made by increasing the slope of the chuck wall and limiting the width of the anti peaking bead, but disagreed whether the specification (including the original claim language) demonstrates that the applicants had possession of an embodiment that improved metal usage by increasing the slope of the chuck wall without also limiting the width of the reinforcing bead. In other words, the dispute centered on whether the specification demonstrated that applicants possessed the ability to use one of the improved methods for saving metal without also employing the other method.
The Federal Circuit agreed with Crown that the claims were supported by an adequate written description, noting that the Court’s decision in Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358 (Fed. Cir. 2009), supports Crown’s position. Specifically, the Court rejected Ball’s attempts to distinguish Revolution Eyewear in the present context where the prior art problems, to which the claimed inventions are directed, are related to one another. “[I]t is a ‘false premise that if the problems addressed by the invention are related, then a claim addressing only one of the problems is invalid for lack of sufficient written description.’” Slip op. at 14 (quoting Revolution Eyewear, 563 F.3d at 1367). Rather, as Crown argued, “[i]nventors can frame their claims to address one problem or several, and the written description requirement will be satisfied as to each claim as long as the description conveys that the inventor was in possession of the invention recited in the claim.” Id. at 13 (alteration in original) (quoting Revolution Eyewear, 563 F.3d at 1367).
Here, the common specification does not teach that metal savings can only be achieved by increasing the chuck wall angle and narrowing the reinforcing bead. For example, data in the specification demonstrated that metal savings could be achieved by varying the slope of the chuck wall even when the reinforcing bead’s width was held constant.
In addition, the Court found that Crown’s original claims showed that Crown recognized and claimed an improvement in metal usage by increasing the slope of the chuck wall without an additional limitation of narrowing the reinforcing bead because the dependent claims added a limitation that would not be needed if the inventors intended that driving would occur outside the reinforcing bead in all embodiments of the claimed invention. “These claims show, as Ariad recognized many original claims do, that the applicants had in mind the invention as claimed.” Id. at 15. Thus, the Federal Circuit found that the written description supported the asserted claims that achieve metal savings by only varying the slope of the chuck wall.
The Federal Circuit also rejected Ball’s argument that increasing the slope of the can end’s chuck wall necessarily required a drive surface that engaged the chuck wall rather than the reinforcing bead. The Court noted that Ball’s position implicated enablement, not written description; Ball had not asserted an enablement challenge; and there was no evidence in the record to suggest that the patents were not enabled. Further, the Court rejected Ball’s reliance on Tronzo v. Biomet, Inc., 156 F.3d 1154 (Fed. Cir. 1998); LizardTech, Inc. v. Earth Resource Mapping, 424 F.3d 1336 (Fed. Cir. 2005); and ICU Medical, Inc. v. Alaris Medical Systems, 558 F.3d 1368 (Fed. Cir. 2008). The Federal Circuit explained that, in each of those cases, the specification unambiguously limited the scope of the invention. In contrast, although the ’875 and ’826 patents described related problems, the patents did not suggest that saving metal by increasing the slope of a can end’s chuck wall necessarily required that there be no contact between a chuck and the interior of the reinforcing bead.
Additionally, the Federal Circuit found that the district court failed to adequately distinguish Crown’s asserted product and method claims. Specifically, the district could found the product claim deficient for failure to include a negative limitation regarding the method of seaming. The Federal Circuit, however, noted that a “patentee need only describe the product as claimed, and need not describe an unclaimed method of making the claimed product.” Slip op. at 18 (quoting Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1331-33 (Fed. Cir. 2003)). Thus, the district court erred in finding that the claims violated the written description requirement.
Finally, the Federal Circuit found that there was a genuine issue of material fact as to whether a prior art Japanese patent application inherently disclosed a particular limitation of the claims. The Court noted that Ball and Crown had put forth conflicting expert testimony on this issue and that where there is a material dispute as to the credibility and weight that should be afforded to conflicting expert reports, SJ is usually inappropriate. Thus, the Federal Circuit found that SJ was not appropriate in this instance because the credibility determinations were matters for a jury.
Accordingly, the Federal Circuit reversed the district court’s entry of SJ with respect to written description and entered judgment in favor of Crown, and reversed and remanded the issue of anticipation for trial.
Judge Dyk dissented-in-part, noting that he would find that the asserted claims did not satisfy the written description requirement. According to Judge Dyk, the specification did not teach either (1) combining the sloped can end wall together with the wider, prior art bead and driving the chuck into the bead instead of the sloped can end wall; or (2) a can end wall having an increased slope in combination with a wider, prior art bead. Thus, “[t]he fact that the claims are broad enough to cover such an invention or imply that the claims cover such an invention is not sufficient when the invention itself is not described either in the claims or elsewhere in the specification.” Dyk Dissent at 3.
Summary authored by Matthew R. Van Eman, M.D., Esq.