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For Simple, Predictable Tech, Undisclosed Variations May Be Covered By Written Description

In reversing a Patent Trial and Appeal Board (PTAB) decision, the US Court of Appeals for the Federal Circuit explained that the level of written description required to show possession of a claimed invention “varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” In re: Global IP Holdings LLC, Case No. 18-1426 (Fed. Cir. July 5, 2019) (Stoll, J).

Global IP Holdings filed a reissue application seeking to broaden its claims. The claims were originally drawn to a carpeted automotive vehicle load floor comprising, in part, thermoplastic materials, and the reissue claims were drawn to load floors in which the “thermo” was struck, permitting any kind of plastic materials. In support of its application, Global filed an inventor declaration stating that at the time of the invention, he was aware of the use of other plastics in vehicle load floors. The examiner rejected the broadened claims, finding that only thermoplastic materials were disclosed in the specification. The PTAB affirmed, rejecting Global’s argument that because the type of plastic used was not critical to the invention and plastics other than thermoplastics were predictable options, the disclosure of thermoplastics supported the claiming of plastics generally. In particular, the PTAB held that the absence of disclosure in the specification of anything but thermoplastics doomed the broader claims “regardless of the predictability of results of substituting alternatives, or the actual criticality of thermoplastics in the overall invention.” Global appealed.

The Federal Circuit found that the PTAB’s reasoning conflicted with precedent establishing predictability and criticality as touchstones of the written description analysis, citing Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. (Fed. Cir. 2010) (en banc) (predictability) and In re Peters (Fed. Cir. 1983) (criticality). The Court vacated the PTAB’s decision but declined to reverse on the basis that it would not decide factual questions regarding predictability or criticality in the first instance.

Practice Note: The Federal Circuit left open for now two related issues regarding burden of proof in the reissue context: (1) whether the examiner or the patentee must establish that a limitation is critical, and (2) the burden of showing predictability of success (or lack thereof) of embodiments that are not expressly disclosed embodiments.

© 2020 McDermott Will & EmeryNational Law Review, Volume IX, Number 242


About this Author


David Mlaver* is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Washington, D.C. office.  He focuses his practice on intellectual property litigation matters.

David received his J.D., cum laude, from the Georgetown University Law Center, where he was a senior editor of The Tax Lawyer.  He earned his A.B. in chemistry and B.S. in biology, with high distinction, from Duke University. David is admitted to practice in Maryland.

*Not admitted to practice in the District of Columbia...

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