Category Archives: Written Description

Inadequate Written Description of Genus without Representative Species or Common Structural Features

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In Juno Therapeutics, Inc. v. Kite Pharma, Inc., [2020-1758] (August 26, 2021), the Federal Circuit reversed the jury verdict that claims of U.S. Patent No. 7,446,290, were not invalid for lack of written description, because it was not supported by substantial evidence.

A specification adequately describes an invention when it “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”  What is required to meet the written description requirement “varies with the nature and scope of the invention at issue, and with the scientific and technologic knowledge already in existence.” A mere wish or plan for obtaining the claimed invention is not adequate written description.  The Federal Circuit said that for genus claims using functional language, like the ones at issue in the case, the written description “must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus.”

On appeal Kite argued that the claims cover an enormous number (millions of billions) of candidates, only a fraction of which satisfy the functional binding limitation for any given target, and that the written description does not meet the written description requirement for this functional binding limitation.  Kite argues that the asserted claims are invalid for failing to satisfy the written description requirement because the patent discloses neither representative species nor common structural features of the claimed genus to identify which combinations would function as claimed.

The Federal Circuit agreed that no reasonable jury could find the ’190 patent’s written description sufficiently demonstrates that the inventors possessed the full scope of the claimed invention. The Federal Circuit said that the ’190 patent’s written description fails to provide a representative sample of species within, or defining characteristics for, the expansive genus claimed.  The Federal Circuit explained that this did not mean that a patentee must in all circumstances disclose the nucleotide or amino acid sequence of the claimed sequences to satisfy the written description requirement when such sequences are already known in the prior art.  But the written description must lead a person of ordinary skill in the art to understand that the inventors possessed the entire scope of the claimed invention.

The Federal Circuit concluded that substantial evidence does not support the jury’s verdict in Juno’s favor on the issue of written description, and reversed.

Synthesizing and Screening Thousands of Candidate Compounds Constitutes Undue Experimentation

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In Idenix Pharmaceuticals LLC. v. Gilead Sciences Inc., [2018-1691] (October 30, 2019), the Federal Circuit affirmed that U.S. Patent No. 7,608,597
was invalid for lack of enablement, and further held that it was invalid for lack of written description as well. A jury found that patent not invalid, and awarded damages. Gilead’s motion for JMOL was granted as to enablement, but denied as to written description.

The only independent claim of the ’597 patent recites:

  1. A method for the treatment of a hepatitis C virus infection, comprising administering an effective amount of a purine or pyrimidine β-D-2′-methylribofuranosyl nucleoside or a phosphate thereof, or a pharmaceutically acceptable salt or ester thereof.

The district court construed the structural limitation “β-D-2′-methyl-ribofuranosyl nucleoside” to require “a methyl group in the 2′ up position
and non-hydrogen substituents at the 2′ down and 3′ down positions,” while construing the preamble “[a] method for the treatment of a hepatitis C virus infection,” as a narrowing functional limitation, limiting the scope to the set of compounds that are effective for treatment of HCV.

The Federal Circuit observed that while the claim requires methyl at the 2′-up position, it allows nearly any imaginable substituent at the 2′-down position. It was undisputed that there are billions of potential 2′-methyl-up nucleosides. The key enablement question was whether a person of ordinary skill in the art would know, without undue experimentation, which 2′-methyl-up nucleosides would be effective for treating HCV. The Federal Circuit concluded they would not.

The Federal Circuit agreed with the district court that the quantity of experimentation required to determine which 2′-methyl-up nucleosides meet claim 1 was very high, favoring a finding of non-enablement. Even taking into account that a person of ordinary skill would know to eliminate certain substitutes, there was still a large number of possibilities. Even just testing the compounds expressly listed in the specification would require considerable effort.

The Federal Circuit further found that there was insufficient guidance in the specification as to which the 2′-methyl-up nucleosides will effectively treat HCV, stating that without specific guidance on that point, the specification provides “only a starting point, a direction for further research.” It is not enough to identify a “target” to be the subject of future testing. A specification that re-quires a POSA to “engage in an iterative, trial-and-error process to practice the claimed invention” does not provide an enabling disclosure.

The unpredictability of the art, and the broad scope of the claims weighed in favor of non-enablement.

Weighing each of the Wands factors, the Federal Circuit concluded as a matter of law that the ’597 patent is invalid for lack of enablement. Having to synthesize and screen each of at least tens of thousands of candidate compounds constitutes undue experimentation.

On the issue of written description, the Federal Circuit, the Federal Circuit said that to fulfill the written description requirement, a patent owner must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention,’ and demonstrate that by disclosure in the specification of the patent. In the context of the this case, this meant that the patent must demonstrate that the inventor was in possession of those 2′-methyl-up nucleosides that fall within the boundaries of the claim (i.e., are effective against HCV), but are not en-compassed by the explicit formulas or examples provided in the specification.

A genus can be sufficiently disclosed by features common to the members of the genus so that one of skill in the art can visualize or recognize the members of the genus, which the Federal Circuit has described as “looking for blaze marks which single out particular trees” in a forest, rather than simply “pointing to trees.”

In particular the Federal Circuit noted the conspicuous absence of any disclosure of the accused compound, saying that a POSA would not “visualize or recognize the members of the genus” as including the accused compound, and thus the specification could not demonstrate to a POSA that the inventor had possession of that embodiment at the time of filing.

“Rigidity Should Yield to Flexible, Sensible Interpretation;” Written Description Satisfied

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In Nalpropion Pharmaceuticals, Inc. v. Actavis Laboratories FL, Inc., [2018-1221] (August 15, 2019), the Federal Circuit held that the district court did not err in finding claim 11 of the U.S. Patent 8,916,195 patent not invalid for lack of written description, but did err in finding that claim 1 of the ’111 patent and claims 26 and 31 of the U.S. Patent 7,462,626 patent would not have been obvious in view of the prior art.

The ’195 patent is also directed to methods of treating overweight or obesity, but the claims are drawn to specific dosages of sustained-release naltrexone and bupropion that achieve a specific dissolution profile. The Federal Circuit conclude that the district court did not clearly err in finding that the inventors had possession of the invention consisting of treating overweight and obesity with the stated amounts of bupropion. The district court found that irrespective of the method of measurement used, the specification shows that the inventors possessed the invention of treating overweight or obesity with naltrexone and bupropion in particular amounts and adequately described it. The Federal Circuit concluded that this finding did not present clear error.irrespective of the method of measurement used, the specification shows that the inventors possessed the invention of treating overweight or obesity with naltrexone and bupropion in particular amounts and adequately described it.

The test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. It is not necessary that the exact terms of a claim be used in haec verba in the specification, and equivalent language may be sufficient. The Federal Circuit noted that while as a general matter written description may not be satisfied by so-called equivalent disclosure, in the present case, buttressed by the district court’s fact-finding, and where the so-called equivalence relates only to resultant dissolution parameters rather than operative claim steps, the Federal Circuit affirmed the district court’s conclusion, noting “rigidity should yield to flexible, sensible interpretation.

The ’111 patent is directed to a composition of sustained-release bupropion and naltrexone for affecting weight loss, and the ’626 patent is drawn to a method for treating over-weight or obesity comprising. Although the district court found the claims non-obvious, in the Federal Circuit’s view, the prior art disclosed the claimed components of the composition claims and the steps of the method claims including the use claimed by the method.

Nalpropion argued that bupropion does not possess sufficient weight loss efficacy to obtain FDA approval by itself, but the Federal Circuit said that motivation to combine may be found in many different places and forms; it cannot be limited to those reasons the FDA sees fit to consider in approving drug applications. Instead, the court should consider a range of real-world facts to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.

The Federal Circuit said that the inescapable, real-world fact here is that people of skill in the art did combine bupropion and naltrexone for reductions in weight gain and reduced cravings—goals closely relevant to weight loss. Contrary to Nalpropion’s view, persons of skill did combine the two drugs even without understanding bupropion’s mechanism of action but with an understanding that bupropion was well-tolerated and safe as an antidepressant. Thus, the Federal Circuit concluded that skilled artisans would have been motivated to combine the two drugs for weight loss with a reasonable expectation of success. The Federal Circuit examined the claims, and concluded that every limitation in the claims at issue was met by the prior art.

The Federal Circuit then examined objective indicia of nonobviousness. Nalpropion argues that many others tried and failed to find a combination effective for weight loss and that the claimed combination exhibited un-expected results, but the Federal Circuit found that a combination drug that affected weight loss—could not have been unexpected. The Federal Circuit said that the failure of others alone cannot overcome the clear record that the combination of the two drugs was known and that both drugs would have been understood to be useful for claimed purpose.

The Federal Circuit affirmed the district court’s decision on written description, but reversed the district court’s decision that the claims were not obvious.

The Written Description Must Provide More than A Mere Wish or Hope that the Invention Would Work

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In Nuvo Pharmaceuticals v. Dr. Reddy’s Laboratories Inc., [2017-2473, 2017-2481, 2017-2484, 2017-2486, 2017-2489, 2017-2491, 2017-2492, 2017-2493] (May 15, 2019), the Federal Circuit reversed the district court’s judgment that the asserted claims of U.S. Patent Nos. 6,926,907 and 8,557,285 were non-obvious, and adequately enabled and described.

Nuvo’s expert identified portions of the specification the he claimed supported the claims, but the Federal Circuit disagreed, noting that it has expressly rejected the “argument that the written description requirement is necessarily met as a matter of law because the claim language appears in ipsis verbis in the specification. the appearance of words in a specification or a claim, even an original claim, does not necessarily satisfy §112 because it may not both put others on notice of the scope of the claimed invention and demonstrate possession of that invention.

The Federal Circuit noted that experimental data demonstrating effectiveness is not required. Patent applications claiming new methods of treatment are usually supported by test results, but it is clear that testing need not be conducted by the inventor. The Federal Circuit also noted that a theory or explanation of how or why a claimed composition will be effective is also not required. Nor does the invention actually have to be reduced to practice. Nevertheless, the Federal Circuit found that the record evidence demonstrates that a person of ordinary skill in the art would not have known or understood the claimed invention.

The Federal Circuit said that in light of the fact that the specification provides nothing more than the mere claim that the invention might work, even though persons of ordinary skill in the art would not have thought it would work, the specification is fatally flawed. It does not demonstrate that the inventor possessed more than a mere wish or hope that the invention would work, and thus it does not demonstrate that he actually invented what he claimed.

The Federal Circuit said that teaching how to make and use an invention does not necessarily satisfy the written description requirement. The enablement requirement, which requires the specification to teach those skilled in the art how to make and use the claimed invention without undue experimentation, is separate and distinct from the written description requirement, which focuses on whether the specification notifies the public about the boundaries and scope of the claimed invention and shows that the inventor possessed all the aspects of the claimed invention.

The Federal Circuit concluded that the patent did not meet the written description requirement, and did not reach the question of enablement, or the patent owners appeal of summary judgment of non-infringement.

A Constructive Reduction to Practice is Sufficient if it Identifies the Claimed invention in a Definite Way.

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In Centrak, Inc. v. Sonitor Technologies, Inc., [2017-2510] (February 14, 2019), the Federal Circuit reversed the district court’s determination that the claims of U.S. Patent No. 8,604,909 are invalid for lack of written description, and non-infringement. The ’909 patent relates to systems for real-time location (RTL), which allow users to locate and identify portable devices in a facility.

The test for sufficiency of a patent’s written description is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. The district court determined that the ’909 patent lacked adequate written description support for an RTL system that relied on ultrasound-based communication from the base stations to the portable devices. However, the Federal Circuit found genuine issues of material fact remain as to whether disclosure of the implementation details that the district court identified is necessary to satisfy the written description requirement.

The Federal Circuit rejected the district court’s reliance on the fact that the specification devoted relatively less attention to the ultrasonic embodiment compared to the infrared embodiment, noting that in ScriptPro it explained that “a specification’s focus on one particular embodiment or purpose cannot limit the described invention where that specification expressly contemplates other embodiments or purposes.” The Federal Circuit instructed that the written description requirement does not demand either examples or an actual reduction to practice; a constructive reduction to practice may be sufficient if it identifies the claimed invention and does so in a definite way.

Written Description is Met by What the Disclosure Reasonably Conveys to Those Skilled in the Art

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In Hologic, Inc. v. Smith & Nephew, Inc., [2017-1389] (March 14, 2018), the Federal Circuit affirmed the Board’s determination that S&N’s earlier-filed PCT application has sufficient written description to make it a priority document instead of an invalidating obviousness reference to U.S. Patent No. 8,061,359.

The claim in disputed is directed to an endoscope “having a light guide
permanently affixed therein.”  The PCT application from which the patent derived described a “fibre optics bundle.”  The Examiner found it did not, and rejected the claims as obvious over the prior PCT application.  However, the Board reversed, finding that the disclosure in the PCT provides sufficient written description support for the claimed “light guide,” entitling the patent to the priority date of the PCT.

The Federal Circuit said that to be entitled to the priority date of the earlier-filed PCT, S&N must show that the PCT discloses what the patent claims, according to the written description requirement of 35 U.S.C. §112.  Specifically, based on an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention
claimed.  The Federal Circuit found that it did.

The Federal Circuit noted that substantial evidence showed that the PCT
discloses a “light guide,” including the fact that the parties did not dispute that a “fibre optic bundle” is a type of light guide, and that various types of light guides were well-known in the art.  The Federal Circuit also rejected the argument that a light guide was not shown in the Figures, pointing out that “written description does not require that every claimed element be illustrated in the figures, particularly in predictable arts and where the element not depicted is conventional and not “necessary for the understanding of the subject matter sought to be patented.”

The Federal Circuit was satisfied that the Board applied the correct law and that substantial evidence supports the Board’s finding that the PCT provides sufficient written description disclosure of the claimed
“first channel having a light guide permanently affixed therein.”

 

Antigens Don’t Describe Antibodies, and the Value of Post-Priority Date Activity on Written Description and Enablement

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In Amgen, Inc. v. Sanofi, [2017-1480](October 5, 2017), the Federal Circuit found that the district court erred by excluding Appellants’ evidence
regarding written description and enablement, and improperly instructed the jury on written description, so the Federal Circuit reversed-in-part the judgment below and remanded for a new trial on written description and enablement (concluding that defendants/appellants were not entitled to JMOL of no written description and no enablement.

The case relates to U.S. Patent Nos. 8,829,165 and 8,859,741 on  antibodies that help reduce low-density lipoprotein cholesterol (LDLC),
or “bad cholesterol.”  The district court  excluded Appellants’ evidence about antibodies, including Appellants’ infringing Praluent, developed after the patents’ priority date of January 9, 2008, reasoning that because the
evidence did not illuminate the state of the art at the time of filing,” it was not relevant “to determine whether there is sufficient disclosure of the claimed invention.”

However, the Federal Circuit found that Appellants were not offering
post-priority-date evidence to show that Appellees’ claimed genus is not enabled because of a change in the state of the art. Instead, Appellants offered Praluent and other post-priority-date antibodies to argue that the
claimed genus fails to disclose a representative number of species. As explained above, the use of post-priority-date evidence to show that a patent does not disclose a representative number of species of a claimed genus is proper. It was thus legal error for the district court to categorically
preclude all of Appellants’ post-priority-date evidence of Praluent and other antibodies. The Federal Circuit reversed the district court’s decision and remanded for a new trial on written description.

The Federal Circuit also found district court’s improper exclusion of post-priority-date evidence requires a new trial on enablement as well. Under the enablement requirement, the specification of a patent must teach
those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.  Appellants purportedly sought to introduce post-priority-date evidence showing that Appellees engaged in lengthy and potentially undue experimentation to enable the full scope of the claims. Such evidence could have been relevant to determining if the claims were enabled as of the priority date and should not have
been excluded simply because it post-dated the claims’ priority date.

The Federal Circuit turned to the jury instructions on written description.  The Federal Circuit said that the district court correctly instructed the jury that in order to satisfy the written description requirement, a patentee may disclose either a representative number of species falling within the scope of the genus or disclose structural features
common to the members of the genus so that one of skill in the art can visualize or recognize the members of the genus.  However the district court went on to instruct that “the correlation between structure and function may also be satisfied by the disclosure of a newly characterized antigen by its structure, formula, chemical name, or physical properties if you find that the level of skill and knowledge in the art of antibodies at the
time of filing was such that production of antibodies against such an antigen was conventional or routine.”  The Federal Circuit this instruction was not legally sound and is not based on any binding precedent.

The Federal Circuit said that this instruction improperly allowed a jury to find adequate written description merely from a finding of the ability to make and use the invention.  The Federal Circuit said that an adequate written description must contain enough information about the actual makeup of the claimed products—“a precise definition, such as by structure, formula, chemical name, physical properties, or other properties, of species falling within the genus sufficient to distinguish the genus from other materials,” which may be present in “functional” terminology “when the art has established a correlation between structure and function.”
However, it is still contested whether the that knowledge of the chemical structure of an antigen gives the required kind of structure-identifying information about the corresponding antibodies.  The Federal Circuit said that Section 112 requires a “written description of the invention,” not something that is not the invention.

The Federal Circuit affirmed the denial of JMOL of lack of written description and enablement, because with the exclusion of post-priority date evidence the record was incomplete to determine whether there is in fact a lack of written description and enablement.  The Federal Circuit also affirmed JMOL of non-obviousness, finding that the district court properly excluded the proffered prior art.  These references, two PCT applications were filed after the priority date, but claimed priority to provisional applications filed before the priority date.  The Federal Circuit noted that appellants did not proffer any evidence showing that the provisional applications contained representative species or common structural
elements sufficient to satisfy the written description requirement for the monoclonal antibodies claimed in the PCT applications.  Similarly, the Federal Circuit noted, Appellants provided no evidence that the claims of the PCT applications were enabled by the provisional application. Because the district court properly excluded the prior art relied upon by appellant, the court’s grant of JMOL of non-obviousness was proper.

Finally, the Federal Circuit vacated the permanent injunction because it vacated the district court’s judgment as to written description and enablement, and was remanding the case for a new trial.

Written Description Must Support Claims; Not Exclude Alternatives

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In The Board of Trustees of the Leland Stanford Junior University v. The Chinese University of Hong Kong, [2015-2011] (June 27, 2017), the Federal Circuit vacated the PTAB’s determination in an interference that Stanford’s claims were unpatentable for lack of written description, because the Board relied on improper evidence to support its key
findings and did not cite to other substantial evidence to support its findings.

Whether a patent claim satisfies the written description requirement of 35 U.S.C. § 112, paragraph 1, depends on whether the description clearly allows persons of ordinary skill in the art to recognize that the inventor
invented what is claimed.  Substantial evidence supports a finding that the specification satisfies the written description requirement when the essence of the original disclosure conveys the necessary information—regardless of how it conveys such information, and even when the disclosure’s words are open to different interpretations.

The Board determined that Stanford’s patent does not disclose the random massively parallel sequencing of nucleic acid sequences claimed in the later-added claims such that a person of skill in the art would have concluded that the Quake inventors were in possession of the method
claimed.  The Board concluded from the language of the specification that the specification referred to targeted, rather than the claimed random sequencing.  The specification specifically mentioned an Illumina sequencer, but in evaluating the specification, the Board relied upon information about a Roche sequencer.  Further the Board’s finding that the language did not exclude targeted sequencing ignores the fact the description might support both random and targeted sequencing.

The Federal Circuit said that the Board’s task was to determine whether the specification’s description discloses random sequencing, as recited
by the later-added claims, not whether the description does not preclude targeted MPS sequencing. The Federal Circuit said that the Board’s
error on this issue is compounded by its failure to explain the meaning of key sentences and phrases in the specification’s discussion of the sequencing process, and its failure to compare these statements to the claim limitations.

For these reasons the Federal Circuit vacated the interference decisions and remanded for the Board to reconsider whether Quake’s relevant patents and applications satisfy the written description requirement.  The Federal Circuit specifically instructed the Board to examine whether a person of ordinary skill in the art would have known, as of the priority date, that the specification’s reference to Illumina products meant random sequencing as recited in the claims, by examining the record evidence as
to pre-filing date art-related facts on Illumina products.  The Federal Circuit said that the Board may include an analysis of whether the record contains testimony or evidence, relevant to this written description analysis, showing that any post-filing date publications contain art-related facts on random sequencing or Illumina products existing on the filing date.

 

Drafting Broad Claims to Cover a Competitor is for Naught if the Specification Doesn’t Support Them

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In Rivera v, ITC, [2016-1841] (May 23, 2017), the Federal Circuit affirmed the ITC’s decision that there was no violation of 19 U.S.C. §1337, because the claims of U.S. Patent No. 8,720,320 were invalid for lack of a written description.

The ‘320 patent relates to single brew coffee machines, which the patent divides into two categories: those configured to receive pods — small, flattened disk-shaped filter packages of beverage extract, and those configured to accommodate larger, cup-shaped beverage filter cartridges.  The ‘320 patent describes the invention as an adapter assembly configured to effect operative compatibility between a single serve beverage brewer and beverage pods.

The Federal Circuit noted that every embodiment in the ’320 patent shows a cup-shaped “receptacle,” adapted to receive a pod.  Although the claims originally filed referenced a pod adapter assembly, after seven years of prosecution none of the claims included any reference to a pod or a pod adapter assembly.  The accused products were adapted to receive loose coffee grounds.

The issue on appeal was whether the “pod adaptor assembly,” “pod,” and “receptacle” disclosures in the patent application as filed, the patent claim element “container . . . adapted to hold brewing material.”  The Commission concluded that the specification did not provide the necessary written description support for the full breadth of the asserted claims, because the specification was entirely focused on a “pod adaptor assembly” or “brewing chamber,” and did not disclose a container that was itself a pod or that contained an integrated filter.

The Federal Circuit noted that both parties analyze the written description issue under the assumption that the asserted claims read on the accused cup-shaped containers. While the parties further agreed that nothing in the ’320 patent explicitly described a pod adaptor assembly with a filter integrated into the cartridge, Rivera argued that the broad definition that pod:

is a broad term and shall have its ordinary meaning and shall include, but not be limited to, a package formed of a water permeable material and containing an amount of
ground coffee or other beverage therein.

in the specification provided adequate support. The Federal Circuit rejected Rivera’s argument, agreeing with the ITC and the intervenor.  The Federal Circuit noted the “underlying concern” of the ‘320 patent was compatibility between pods and cartridges. The Federal Circuit quoted extensively from the specification, noting the distinction between pods and cartridges “permeates the entire patent.”  The Federal Circuit said there was no hint or discussion of a cartridge or pod adaptor assembly or receptacle that also serves as the “pod.”  The Federal Circuit noted that the distinction carries through to every embodiment.  The Federal Circuit concluded that the “broad” definition of a pod
does not change the fact that however broad “pod” is, it must
still be distinct from pod adapter assembly.

The Federal Circuit made of point of stating that the Patent Owner agreed that the claim covered the accused product.  Setting the scope set the question of adequate written description. Otherwise, construing a claim in view of the specification would result in a narrower scope, rather than invalidity. Perhaps the claim could have been saved, but it wouldn’t cover what the patent owner wanted it to.

While the focus of patent scope is rightly on crafting the claims, to get the full scope of the carefully crafted claims, the specification needs to provide a written description and an enable disclosure.

 

 

 

Written Description Lacking Where Nothing in the Specification Suggests Inventor Contemplated Claimed Invention

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In Cisco Systems, Inc. v. Cirrex Systems, LLC, [2016-1143, 2016-1144](May 10, 2017), the Federal Circuit affirmed in part, and reversed in part the Board’s decision in inter partes reexamination of U.S. Patent No. 6,415,082.  Cisco appealed the patentability finding of five of the claims, and Cirrex appealed the rejection of the remainder of the claims.  The Federal Circuit found that all of the claims on appeal were unpatentable for lack of written description support.

The ‘082 patent is directed to the field of fiber optic communication signals.  At issue was the claim requirement of discrete attenuation of the various wavelengths of light, which the parties agreed must occur in the planar lightguide circuit (PLC).  However, there was not written description of how discrete attenuation could occur within the PLC, rather that attenuation of all of the wavelengths (i.e. collective attenuation).  The Federal Circuit agreed twith Cisco that the claims are directed to subject matter that is indisputably missing from the ’082 specification.

The Federal Circuit said that the ’082 specification does not meet the quid pro quo required by the written description requirement for the disputed claims because demultiplexing light to manipulate separately the intensities of individual wavelengths of light while the light is still inside the PLC is a technically difficult solution that the ’082 specification does not solve, let alone contemplate or suggest as a goal or desired result. The Federal Circuit added:

Nothing in the ’082 specification explains how individual wavelengths of light are separately manipulated while those wavelengths are still inside the PLC. Nor is there anything in the specification that suggests that the inventor contemplated that approach. To the contrary, the ’082 specification expressly describes using the PLC to separate wavelengths of light to allow the manipulation of each individual wavelength—outside the PLC—before it is rerouted back into the PLC for remultiplexing.

The Board also rejected Cirrex’s arguments that the claims requiring a diverting element were supported by adequate written description.   The Board concluded that the totality of of the disclosure did not establish that the inventors possessed an embodiment with a diverting element inside the PLC, and the Federal Circuit agreed.