Claim Invalid for Lack of Written Description
September 04, 2002
Last Month at the Federal Circuit - October 2002
Judges: Lourie (author), Mayer, and Linn
In PIN/NIP, Inc. v. Platte Chemical Co., No. 02- 1056 (Fed. Cir. Sept. 4, 2002), the Federal Circuit affirmed a finding that claim 1 of U.S. Patent No. 5,622,912 (“the ‘912 patent”) is not invalid as being anticipated or obvious, reversed a finding that PIN/NIP, Inc. (“PIN/NIP”) had infringed claims 1 and 33 of the ‘912 patent, and reversed a finding that claim 33 satisfies the written-description requirement of 35 U.S.C. § 112, ¶ 1.
The ‘912 patent is directed to a composition and method for inhibiting sprout growth on tubers, such as potatoes. Sprouting can cause tubers to exhibit undesirable texture and sugar levels. The ‘912 patent serves to inhibit sprout development by using a combination of the synthetic chemical chlorpropham (“CIPC”) and a substituted naphthalene. The applicants had obtained allowance of their claims by demonstrating unexpected results.
The district court had construed claim 1 to include “compositions” formed by the spaced sequential application of two ingredients to a tuber in storage, even though the two ingredients are not physically combined, as long as they work together to inhibit sprouting on the tuber. On appeal, PIN/NIP argued that the term “composition” requires a physical mixture of the constituents in part because the ‘912 patent uses the terms “composition” and “mixture” synonymously, and because the only embodiment described in the specification involves a premixture of CIPC with either dimethylnaphthalene (“DMN”) or diisopropylnaphthalene (“DIPN”). Platte Chemical Company (“Platte”) responded that the district court had properly given the term “composition” the full breath of its ordinary meaning, so as to include the ordering or arranging of materials that do not physically come into contact with each other. Platte also asserted that one skilled in the art would not conclude that the specification discloses only a premixture of the constituents.
The Federal Circuit agreed with PIN/NIP concerning the interpretation of the disputed claim language, concluding that the term “composition” generally refers to mixtures of substances and cannot be construed by analogy to a painting. The Court agreed that the specification taught only this use of the term “composition.”
Concerning validity, the Federal Circuit agreed that the prior art did not anticipate the claims. The prior art, which included a Ph.D. thesis and doctoral research of Dr. James Beveridge, referred to an experiment where DMN-treated potatoes were inadvertently exposed to CIPC as well. The Federal Circuit concluded that the thesis’s passing reference to potatoes exposed to both CIPC and DMN failed to constitute clear and convincing evidence to support a finding of anticipation because it does not disclose that a “composition” of CIPC and DMN was ever formed, as that phrase was construed by the Court. The Federal Circuit also agreed that substantial evidence existed to support the jury’s conclusion of nonobviousness.
Concerning infringement, the Federal Circuit concluded, in light of its construction of the term “composition,” that substantial evidence did not support a finding of infringement. Accordingly, the Court remanded for an opportunity to prove infringement under the new claim construction.
The Court also ruled that claim 33 is invalid because nothing in the specification indicates that the invention is anything other than a mixture of two chemicals. Platte had added claim 33 to its pending patent application to encompass separate applications of the ingredients to tubers, and even admitted that claim 33 as written is arguably broader than the examples disclosed in the ‘912 patent. The Court concluded that while it is legitimate to amend claims or add claims to a patent application purposefully to encompass devices or processes of others, there must be support for such amendments or additions in the originally filed application. Because claim 33 is directed to new subject matter, the Federal Circuit reversed the judgment of validity and infringement of claim 33 and found it invalid.