{"id":1574,"date":"2017-05-23T14:27:41","date_gmt":"2017-05-23T18:27:41","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1574"},"modified":"2017-05-25T23:40:24","modified_gmt":"2017-05-26T03:40:24","slug":"drafting-claims-to-cover-a-competitor-is-for-naught-if-the-specification-doesnt-support-them","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1574","title":{"rendered":"Drafting Broad Claims to Cover a Competitor is for Naught if the Specification Doesn’t Support Them"},"content":{"rendered":"

In Rivera v, ITC<\/a>, [2016-1841] (May 23, 2017), the Federal Circuit affirmed the ITC’s decision that there was no violation of\u00a019 U.S.C. \u00a71337, because the claims of\u00a0U.S. Patent No. 8,720,320 were invalid for lack of a written description.<\/p>\n

The ‘320 patent relates to single brew coffee machines, which the patent divides into two categories: those configured to receive pods —\u00a0small, flattened disk-shaped filter packages of beverage\u00a0extract, and those configured to accommodate\u00a0larger, cup-shaped beverage filter cartridges. \u00a0The ‘320 patent describes the invention as an adapter assembly configured to effect operative compatibility\u00a0between a single serve beverage brewer and\u00a0beverage pods.<\/p>\n

The Federal Circuit noted that every embodiment in the \u2019320\u00a0patent shows a cup-shaped \u201creceptacle,\u201d adapted to receive a\u00a0pod. \u00a0Although 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. \u00a0The accused products were adapted to receive loose coffee\u00a0grounds.<\/p>\n

The issue on appeal was whether the \u201cpod adaptor\u00a0assembly,\u201d \u201cpod,\u201d and \u201creceptacle\u201d disclosures in the\u00a0patent application as filed, the patent claim element \u201ccontainer . . . adapted to\u00a0hold brewing material.\u201d \u00a0The Commission concluded that the specification did\u00a0not provide the necessary written description support for\u00a0the full breadth of the asserted claims, because the specification\u00a0was entirely focused on a \u201cpod adaptor assembly\u201d\u00a0or \u201cbrewing chamber,\u201d and did not disclose a container\u00a0that was itself a pod or that contained an integrated filter.<\/p>\n

The Federal Circuit noted that\u00a0both parties analyze the written description issue under\u00a0the assumption that the asserted claims read on the accused\u00a0cup-shaped containers. While the parties further agreed that nothing\u00a0in the \u2019320 patent explicitly described a pod adaptor\u00a0assembly with a filter integrated into the cartridge, Rivera argued that the broad definition that pod:<\/p>\n

is a broad term and shall have its ordinary meaning and\u00a0shall include, but not be limited to, a package formed of a\u00a0water permeable material and containing an amount of
\nground coffee or other beverage therein.<\/p><\/blockquote>\n

in the specification provided adequate support. The Federal Circuit rejected Rivera’s argument, agreeing with the ITC and the intervenor. \u00a0The 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.” \u00a0The Federal Circuit said there was no hint or discussion of a\u00a0cartridge or pod adaptor assembly or receptacle that also\u00a0serves as the \u201cpod.\u201d \u00a0The Federal Circuit noted that the distinction carries through to every embodiment. \u00a0The Federal Circuit concluded that the \u201cbroad\u201d definition of a pod
\ndoes not change the fact that however broad \u201cpod\u201d is, it must
\nstill be distinct from pod adapter assembly.<\/p>\n

The Federal Circuit made of point of stating that the Patent Owner agreed that the claim covered the accused product. \u00a0Setting 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.<\/p>\n

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.<\/p>\n

 <\/p>\n

 <\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Rivera v, ITC, [2016-1841] (May 23, 2017), the Federal Circuit affirmed the ITC’s decision that there was no violation of\u00a019 U.S.C. \u00a71337, because the claims of\u00a0U.S. Patent No. 8,720,320 were invalid for lack of a written description. The ‘320 … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[7,31],"tags":[],"class_list":["post-1574","post","type-post","status-publish","format-standard","hentry","category-claim-constructino","category-written-description"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1574","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1574"}],"version-history":[{"count":3,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1574\/revisions"}],"predecessor-version":[{"id":1577,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1574\/revisions\/1577"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1574"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1574"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1574"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}