Drawings Showing Claimed Features Meet Written-Description Requirement
May 14, 2002
Last Month at the Federal Circuit - June 2002
Judges: Lourie (author), Mayer, and Schall
In Cooper Cameron Corp. v. Kvaerner Oilfield Products, Inc., No. 01-1383 (Fed. Cir. May 14, 2002), the Federal Circuit affirmed a district court’s grant of SJ of noninfringement under the DOE, reversed a SJ that certain printed reports do not qualify as prior art, and reversed a SJ of invalidity for inadequate written description.
Cooper Cameron Corporation (“Cooper”) owns U.S. Patent No. 5,544,707 (“the ‘707 patent”) and U.S. Patent No. 6,039,119 (“the ‘119 patent”). Both patents claim the benefit of a European Patent Office application filed in June 1992. The ‘707 patent and the ‘119 patent describe well heads including “workover ports” for protecting the integrity of subsea wells during repair and maintenance activities. Claim 10 of the ‘707 patent recites a workover port extending laterally through the wall of the spool tree from between the two plugs.
The ‘119 patent is a continuation of the ‘707 patent. The claims of the ‘119 patent also include a workover port, but define the vertical position of the workover port without reference to the plugs as recited in claim 10 of the ‘707 patent. In particular, claim 1 of the ‘119 patent recites a workover port “extending through said wall of said spool tree for selective fluid circulation with that portion of said common passageway below the BOP bore and above said tubing hanger.”
Kvaerner Oilfield Products, Inc. (“Kvaerner”) manufactures and sells a subsea Side Valve Tree device (“the accused device”) that includes a workover port. The workover port in the accused device is above both plugs, as that term is used in the ‘707 patent. Cooper sued Kvaerner for infringement of claim 10 of the ‘707 patent under the DOE and for literal infringement of certain claims of the ‘119 patent.
The district court had granted Kvaerner’s motion for SJ of noninfringement of the ‘707 patent on the basis that Cooper was estopped from asserting infringement under the DOE due to amendments made to claim 10 of the ’707 patent during prosecution. Alternatively, the district court had determined that the relevant element recited in claim 10 of the ‘707 patent was not present in the accused device as a matter of law because the accused device had a workover port connected to the spool tree above the two plugs.
Kvaerner also had asserted that claims of both the ’707 and ’119 patents were invalid as anticipated by reports written by Subsea Intervention Systems Limited. Cooper had moved for SJ that the reports were not “printed publications” for purposes of 35 U.S.C. § 102, which the district court granted.
Further still, Kvaerner had moved for partial SJ that the asserted claims of the ’119 patent were invalid for failure to meet the written-description requirement of 35 U.S.C. § 112, ¶ 1. The district court granted this motion on the basis that the disclosure only referred to the workover port as being located between the two plugs and, thus, did not support claims defining the workover port in other places.
On appeal, the Federal Circuit affirmed the SJ of noninfringement under the DOE, after determining that the limitation “between the two plugs” is a material limitation, not to be ignored in applying the “all-elements” rule.
Concerning the printed publications issue, the Federal Circuit ruled that the district court had erred in granting SJ as Kvaerner had raised genuine issues of material fact about whether the reports were sufficiently available before the critical date. The Federal Circuit instructed the district court on remand to consider that the reports need only be accessible to members of the interested public.
As to the invalidity of the claims of the ‘119 patent for failure to meet the written description requirement of § 112, ¶ 1, Cooper argued that the application drawings constitute an adequate written description. The Federal Circuit agreed and reversed the district court’s grant of SJ, finding that Figure 7 of the ‘119 patent, in particular, provides the necessary description.