The Federal Circuit denied a petition for rehearing en banc over the issue of what is required in the written description to justify a patent’s claims. Lizardtech’s patent claim was invalidated by the Federal Circuit for having claims “in excess of the specification’s embodiments.” Lizardtech appealed arguing that prior law created uncertainty about what is required in a written description. The concurring opinion stated that the statute governing written description in patent claims (35 U.S.C. § 112) is clear in its requirements but the dissent called for a clarification of written description doctrine in light of confusing case law.
The concurring opinion stated that 35 U.S.C. § 112 requires a written description of the invention that is independent of the enablement requirement and a statement of the best mode of the invention. Judge Lourie, with whom Judges Michel and Newman joined, reiterated that the policy purpose of this rule is to require adequate disclosure of the invention. The opinion stated that any inconsistencies in the law exist because of questions of fact. According to the court, “what constitutes an adequate written description depends on what is claimed and what is described.” The court found that the law is clear and consistent needing no further clarification from an en banc decision.
The dissent by Judge Rader, which was joined by Judge Gajarsa, argued that the written description doctrine has become “opaque to the point of obscuring other areas of this court’s law.” The dissent criticized the imprecise doctrine for providing “little or no guidance about the standard it uses to decide” when “disclosure was inadequate.” Judge Rader suggested that the court lost its way when it abandoned the traditional written description test in the 1997 case of Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559 (Fed. Cir. 1997). According to Judge Rader, the written description test was no more than another name for the new matter test. In other words, according to Judge Rader, historically the written description test just looked to see whether the matter in later claim amendments was disclosed in the original specification and claims. If so, then the later amendments could maintain the priority date of the original application. Judge Rader further argued that the statute sets out no test for adequate written description beyond whether the specification and claims enable one of skill in the art to practice the invention. The dissent concluded by urging that the time is ripe for en banc reconsideration of the convoluted and confused written description doctrine set out in the Federal Circuit’s precedents.