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When a Party Challenges Written Description Support for a Copied Claim in an Interference, the Claims Are Construed in Light of the Originating Disclosure

08-1466
June 04, 2009

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Last Month at the Federal Circuit - July 2009

Judges:

Mayer, Rader (author), Posner (Circuit Judge sitting by designation)

[Appealed from: N.D. Cal., Judge Ware]

In Agilent Technologies, Inc. v. Affymetrix, Inc., No. 08-1466 (Fed. Cir. June 4, 2009), the Federal Circuit reversed the district court’s award of priority to Affymetrix, Inc. (“Affymetrix”), concluding that the district court erred with regard to claim construction, improperly denied Agilent Technologies, Inc.’s (“Agilent”) motion for SJ with regard to written description under § 112, ¶ 1, and improperly granted Affymetrix’s cross-motion on the same issue.

The case arose out of an interference proceeding between Agilent and Affymetrix. The claims at issue originated in Agilent’s U.S. Patent No. 6,513,968 (“the Schembri patent”). After the Schembri patent issued, Affymetrix, believing it had earlier invented the claimed methods, copied the Schembri patent’s claims into its U.S. Patent Application No. 10/619,244 (“the Besemer application”) to provoke an interference. The Board declared an interference to determine which party had priority of inventorship. Because the Besemer application claimed the benefit of an earlier filing date, the Board declared Affymetrix the senior party to the interference and, as a result, the Board found Agilent had the burden to show prior entitlement to the patented technology.

The disputed claims pertained to “microarray hybridization,” a technique for performing millions of genetic analyses on a small fluid sample. To conduct a microarray test, the testor introduces a fluid sample containing genetic material of interest onto the microarray surface. To achieve proper hybridization results, the testor then must make sure that the fluid contacts the entire microarray surface. The disputed invention focused primarily upon the method of mixing the fluid for thorough contact with the microarray surface. The interfering subject matter was claim 20 of the Schembri patent, or claim 66 of the Besemer application. The claims recited “a method comprising . . . providing a first substrate and a second substrate having inner surfaces that define a closed chamber there between, said chamber adapted to retain a quantity of fluid . . . ; introducing a fluid . . . into the closed chamber . . . ; providing a bubble in the fluid; and moving a bubble within the fluid to result in mixing.” Slip op. at 3.

According to the Schembri specification, conventional mixing methods did not adequately mix assays with small fluid samples. Agilent claimed a new method of mixing fluid via nucleation of bubbles within the fluid sample. According to the Court, Agilent claimed an invention in which a bubble is introduced into the fluid sample. Multiple heat resistors were utilized to create a heat gradient that causes the bubble to move throughout the fluid sample. This movement of the bubble causes a mixing of the fluid sample in the closed chamber.

Affymetrix’s Besemer application described microarray chips and “chip packages” onto which the microarray chips are mounted. The Besemer invention involved mounting a microarray chip above a cavity. Fluids were then circulated through the cavity via inlets that communicate with the cavity. In two of the three Besemer embodiments, an agitator used ports, vents, and valves to inject gas into the containers holding fluid targets for hybridization. In these “circulator” embodiments, the agitation forced fluid in and out of the cavity. As the fluid flowed in and out of the cavity, the fluid targets and probes mixed to effect hybridization. The Court noted that “in the discussion of this embodiment, Besemer teaches that ‘[t]he bubbles formed by the [gas] agitate the fluid as it circulates through the system.’” Id. at 6 (first alteration in original) (quoting Besemer application at 28).

The third embodiment accomplished fluid mixing in a different manner. In the “vortexer” system, a hybridization chip package was mounted on a vortexer. A container then filled with fluid containing targets. At that point, various valves opened to allow nitrogen gas to enter the container, thereby forcing fluid into the cavity. Valves then sealed the fluid in the chip package and the vortexer then rapidly vibrated the chip package. As noted by the Court, this vibrating motion mixed the targets in the fluid and completed the hybridization reaction.

Before the Board, Agilent filed a motion challenging the validity of the copied claims under § 112, ¶ 1 on the ground that the Besemer application did not adequately describe the invention. The Board disagreed and found that the Besemer application showed support for the claimed invention. Accordingly, the Board awarded priority to the Besemer application and canceled the contested claims of Agilent’s Schembri patent. Agilent appealed to the district court pursuant to 35 U.S.C. § 146. After a claim construction hearing, the parties submitted cross-motions for SJ on the written description issue. The district court affirmed the Board’s holding and granted Affymetrix’s SJ motion.

On appeal, Agilent challenged the district court’s claim construction and written description decisions. As a preliminary matter, the Court noted that it must first determine which specification to consult when construing a copied claim whose written description is challenged in an interference. The district court construed the claims in light of the Besemer application, the host application whose written description was challenged. Agilent argued that the proper reference point for claim construction was the Schembri specification, the disclosure from which the claims originated. To decide which specification informs the interpretation of the contested claims, the Court noted that it must examine two of its prior decisions, In re Spina, 975 F.2d 854 (Fed. Cir. 1992), and Rowe v. Dror, 112 F.3d 473 (Fed. Cir. 1997).

In Spina, the applicant copied a claim from another patent to provoke an interference. The Federal Circuit viewed the contested claims in light of the specification from which the claims had been copied, stating, “When interpretation is required of a claim that is copied for interference purposes, the copied claim is viewed in the context of the patent from which it was copied.” Slip op. at 8 (quoting Spina, 975 F.2d at 856). In Rowe, however, the Court reached a seemingly contrary conclusion. The Court noted that Rowe had copied several claims from the Dror patent to provoke an interference. Dror filed a motion seeking judgment against Rowe on the ground that a third party had anticipated some of the contested claims. The Court held that when considering the novelty or nonobviousness of an application’s claims, the claims must be construed in light of the host specification. Rowe, 112 F.3d at 479. Recognizing that this result was at odds with Spina, the Rowe court expressly distinguished the two cases. The Court held that in Spina, the Court considered whether an applicant was eligible to copy a patentee’s claim and thereby challenge priority of invention. This question turned on whether the copying party’s specification adequately supported the subject matter claimed by the other party. The Federal Circuit held, in that context, that a copied claim must be interpreted in light of its originating disclosure. The Court noted that the Spina rule sought to ensure that the PTO would only declare an interference if both parties had a right to claim the same subject matter. However, the Court held that that rule did not apply in cases, such as Rowe, where the issue was whether the claim was patentable to one or the other party in light of prior art. In that posture, the Court held that the PTO and the Court must interpret the claim in light of the specification in which it appears.

The Court held that this case called for application of the Spina rule because the question was “whether the copying party’s specification [Besemer] adequately supported the subject matter claimed by the other party
[Schembri].” Slip op. at 9 (alterations in original) (quoting Rowe, 112 F.3d at 479). In Rowe, the differentiating characteristic was whether the claim was patentable to one or the other party in light of the prior art. The Court noted that where the PTO assesses the viability of an applicant’s claims in the face of § 102 or § 103 challenges, the proper reference point for determining claim meaning is the host disclosure, just as in ex parte prosecution. By contrast, the Court stated, where the PTO must assess whether both parties have a right to claim the same subject matter, as in the instant case, the claim construction analysis properly occurred in the context of the specification from which the claims were copied. Accordingly, the Court held that the districtcourt erred in construing the claim language in light of the Besemer application rather than the originating Schembri disclosure.

On the issue of claim construction, the Court held that the district court erred in its construction of the term “a closed chamber . . . adapted to retain a quantity of fluid.” The district court had construed the term to mean “an enclosed cavity, or some other enclosure or system of enclosures, which is capable of being sealed or set apart from its surroundings to retain a quantity of fluid.” Id. at 11. The Court reversed the district court’s construction, holding that it was not grounded in the right disclosure and did not honor the customary meaning of the claim language to one skilled in the art. The Court stated that the proper meaning of a “closed chamber . . . adapted to retain a quantity of fluid” was “an enclosed cavity defined by the inner surfaces of the first and second substrates, from where there is no egress of fluid.” Id. at 16.

Next, the Court addressed the issue of whether the district court properly granted Affymetrix’s motion for SJ that the Besemer application satisfied the written description requirement of § 112, ¶ 1. Before the Court discussed the merits of the district court’s SJ decision, the Court first addressed Agilent’s contention that the district court adopted the incorrect standard of review in considering new evidence that had not been before the Board. Under 35 U.S.C. § 146, a party can supplement an incomplete record and bring forth further testimony if that party initiates a civil action in a district court. The Court noted that in § 146 actions, if the new evidence conflicts with the record before the Board, the district court must make de novo factual findings regarding this new evidence.

The Board found that Schembri had not advanced any meaningful evidence to show that one of ordinary skill in the art would not have understood Besemer’s specification to inherently disclose using bubbles to mix fluid in a closed chamber. Agilent attempted to remedy this evidentiary deficiency by submitting new expert testimony regarding the Besemer application’s disclosure. The Federal Circuit noted that Agilent attempted to submit evidence that was “highly probative” to the parties dispute regarding the alleged deficiency in the Besemer application, but the evidence was discarded by the district court. The Court held that this constituted legal error. Section 146 permits the submission of such new evidence. Accordingly, the Court examined the newly proffered evidence without deference to the Board’s finding.

To support its written description argument, Agilent argued that the “circulator” embodiments of the Besemer application did not describe a method that takes place in a “closed chamber,” whereas the “vortexer” embodiment did not describe bubble mixing at all. Thus, Agilent argued that Besemer could not show possession of the claimed invention because no embodiments described a method of both introducing fluid into a closed chamber and using bubbles to mix the fluid. The proper construction of a “closed chamber . . . adapted to retain a quantity of fluid” was “an enclosed cavity defined by the inner surfaces of the first and second substrates, from which there is no egress of fluid.” After analyzing the Besemer specification, the Court held that, in light of the proper claim construction and the undisputed facts, the “circulator” embodiments provided no disclosure of introducing fluid into a “closed chamber.”

The Court then observed that the “vortexer” embodiment taught introducing fluid into a closed reaction chamber from which fluid did not egress. The Court then turned to the question of whether the “vortexer” embodiment further described “providing a bubble in the fluid” and “moving a bubble within the fluid to result in mixing,” as required by the claims in question. Affymetrix argued that bubbles are inherently produced in the vibrating chip package because a person skilled in the art in 1994 would have known that to achieve mixing, there must be a void in the chamber. Affymetrix further argued that when the chip package is vibrated, the bubble is moved within the fluid to result in mixing. The Court observed that this argument was “belied by a critical admission from Affymetrix’s expert that bubbles are not necessarily formed by nitrogen gas in the vortexer reaction chamber.” Id. at 23. The Court stated that the “very essence of inherency is that one of ordinary skill in the art would recognize that a reference unavoidably teaches the property in question.” Id. The Court held that in light of this admission, Affymetrix’s argument that the vortexer chamber might include an unmentioned void, and in turn, that void might result in bubble generation, was insufficient to establish inherency.

The Court reversed the district court’s granting of SJ in Affymetrix’s favor. And in light of the new evidence submitted by Agilent, the Court reversed the district court’s denial of Agilent’s cross-motion for SJ.

Summary authored by Jason M. Webster, Esq.