Written Description: The Federal Circuit's Search For Clarity Continues

Wednesday, September 1, 2004 - 00:00

Our article in the August 2004 issue of The Metropolitan Corporate Counsel discussed the Federal Circuit's internal debate as to whether section 112 of the Patent Act contains a separate written description requirement. We concluded by noting that it remains to be seen whether the Federal Circuit will address the issue en banc . The court has now determined that it will not, at least at this time, resolve the issue as an en banc court. University of Rochester v. G.D. Searle & Co., Inc ., F.3d __, No. 03-1304 (Fed. Cir. July 2, 2004).

Given the history of the debate, it was not at all surprising that the University of Rochester sought review by the full court after the Federal Circuit, in a decision authored by Judge Lourie and joined by Judges Bryson and Dyk, affirmed the district court's determination that its patent was invalid for failure to satisfy the written description requirement. As discussed in our earlier article, the panel concluded in response to arguments made by the University that the statute indeed contains a stand-alone written description requirement. On July 2, 2004, the court denied the University's petition for review by the full court, with seven judges voting in favour of denial of en banc review (Chief Judge Mayer and Judges Michel, Lourie, Clevenger, Schall, Dyk and Prost), and five judges dissenting (Judges Newman, Rader, Bryson, Gajarsa and Linn).

Judge Lourie concurred in the denial on the ground that "[the court's] precedent is clear and consistent and necessitates no revision of written description law." Building on his many earlier opinions in this area, Judge Lourie explained: "The requirement to describe one's invention is basic to the patent law, and every patent draftsman knows that he or she must describe a client's invention independently of the need to enable one skilled in the relevant art to make and use the invention. The specification then must also describe how to make and use the invention (i.e., enable it), but that is a different task."

In dissenting, Judge Rader, joined by Judges Gajarsa and Linn (who also filed his own dissent), reiterated many of the points made in his earlier dissents, but with an emphasis on the need for clarification on this issue, focusing on the importance of the issues to the biotechnology, chemical, and software industries.

Judge Newman also dissented, but on the ground that the court should avoid "continuing debate in panel opinions applying divergent law," urging that the Federal Circuit should "resolve the matter as a court and again speak with one voice." She nevertheless made clear that she "fully share[s] Judge Lourie's understanding of the law": "it is simply incorrect to say that there is not now and never has been a 'written description' requirement in the patent law."

Along with Judge Lourie, Judge Dyk concurred in the denial of en banc review, emphasizing his agreement with Judge Lourie's views on the doctrine. His concurrence noted, however, that the court might at some future date appropriately address the proper standards for application of the written description requirement, but noting that "this is neither the right time, nor the right case, in which to consider those difficult questions."

It thus appears that at least for now the Federal Circuit will continue down the long and winding road in its search for clarity on the written description requirement.

Elizabeth Stotland Weiswasser is a Partner of Weil, Gotshal & Manges, resident in the Washington, DC office. Vernon M. Winters, a Partner in the Global Patent Litigation Group of Weil Gotshal & Manges, is resident in Weil's Silicon Valley office. Steven D. Glazer chairs the Patent Litigation and Counseling Practice Group in Weil Gotshal's New York office. The original article also appeared in the May 2004 issue of Patent World.

Please email the authors at elizabeth.weiswasser@weil.com or vernon.winters@weil.com or steven.glazer@weil.com with questions about this article.