{"id":2041,"date":"2018-05-21T21:36:10","date_gmt":"2018-05-22T01:36:10","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2041"},"modified":"2018-05-28T22:42:22","modified_gmt":"2018-05-29T02:42:22","slug":"patent-owner-could-not-claim-priority-to-provisional-application-that-only-disclosed-species-of-claimed-genus","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2041","title":{"rendered":"Patent Owner Could Not Claim Priority to Provisional Application That Only Disclosed Species of Claimed Genus"},"content":{"rendered":"

D Three Enterprises, LLC v. Sunmodo Corporation<\/a>, [2017-1909, 2017-1910](May 21, 2018), the Federal Circuit affirmed the district court’s grant of summary judgment of invalidity of U.S. Patent\u00a0Nos. 8,689,517, 9,068,339,\u00a0and 8,707,655, based upon a determination that they could not claim priority to provisional application no. 61\/150,301.<\/p>\n

The patents-in-suit are directed to roof mount sealing\u00a0assemblies, which allow users to mount objects on a roof\u00a0and seal the mounting location against water.\u00a0 The District Court determined that the patents-in-suit\u00a0could not claim priority from the provisional application because the claims were broader than the\u00a0invention disclosed in the provisional application, and thus the written description requirement\u00a0pursuant to 35 U.S.C. \u00a7112(a).<\/p>\n

The Federal Circuit noted that\u00a0to claim a genus, a patentee must disclose a representative\u00a0number of species falling within the scope of the\u00a0genus or structural features common to the members of\u00a0the genus so that a PHOSITA can visualize or recognize\u00a0the members of the genus.\u00a0 All of the asserted claims save one\u00a0recite washerless assemblies.\u00a0 The provisional application\u00a0disclosed one washerless assembly, depicted in Figures\u00a027\u221233 and 41, showing an an attachment bracket with W-shaped prongs.\u00a0 The district court noted that\u00a0all of the applications disclosed this\u00a0attachment bracket, such that a\u00a0PHOSITA\u00a0would not understand the attachment bracket to be an \u201coptional\u00a0feature.\u201d\u00a0 However, the claims to the washerless version were not limited to attachment brackets with the W-shaped prongs.<\/p>\n

The Federal Circuit first considered with summary judgement on the issue was appropriate, finding that the patent owner had sufficient notice, so that it was.\u00a0 \u00a0The Federal Circuit then turned to the merits, agreeing with the district court that\u00a0washerless\u00a0assemblies using attachments other than attachment\u00a0bracket with the W-shaped prongs were not adequately disclosed in the provisional application, which in no way contemplated the use of other types of\u00a0attachment brackets in a washerless assembly.\u00a0 The Federal Circuit added that\u00a0it was not sufficient for\u00a0purposes of the written description requirement of \u00a7 112
\nthat the disclosure, when combined with the knowledge in\u00a0the art, would lead one to speculate as to the modifications\u00a0that the inventor might have envisioned, but failed\u00a0to disclose.<\/p>\n

D Three argued that boilerplate language in the provisional application disclosed alternative attachment brackets:<\/p>\n

[PHOSITAs] will recognize certain modifications, permutations,\u00a0additions and sub-combinations therefore. It is\u00a0therefore intended that the following appended claims\u00a0hereinafter introduced are interpreted to include all such\u00a0modifications, permutations, additions and subcombinations\u00a0are within their true sprit [sic] and scope.<\/p><\/blockquote>\n

But the Federal Circuit found that this boilerplate language at the end of the provisional application was\u00a0not sufficient to show adequate
\ndisclosure of the actual combinations and attachments\u00a0used in the Washerless Claims.\u00a0The Federal Circuit noted that adequate written description\u00a0does not ask what is permissible in view of the disclosure, rather, it asks what is\u00a0disclosed.<\/p>\n

The Federal affirmed that the provisional application lacked adequate written description of what was claimed, and thus did not support a claim of priority.<\/p>\n

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

D Three Enterprises, LLC v. Sunmodo Corporation, [2017-1909, 2017-1910](May 21, 2018), the Federal Circuit affirmed the district court’s grant of summary judgment of invalidity of U.S. Patent\u00a0Nos. 8,689,517, 9,068,339,\u00a0and 8,707,655, based upon a determination that they could not claim priority … 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":[59,60],"tags":[],"class_list":["post-2041","post","type-post","status-publish","format-standard","hentry","category-priority","category-provisional-applications"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2041","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=2041"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2041\/revisions"}],"predecessor-version":[{"id":2042,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2041\/revisions\/2042"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2041"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2041"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2041"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}