Amicus Briefs in Ariad v. Lilly: Google, Verizon Communications Inc. and Cisco Systems, Inc.

    By Kevin E. Noonan --

The three members of the "high technology" community named above have weighed in on the Federal Circuit's en banc review of the written requirement and provide their own unique perspective on a debate that has raged primarily in the biotechnology sector over the past several years (see amicus brief).  These companies are clear that they not only believe there is a separate written description requirement, but that it serves an important and unique purpose in preventing "overreaching" by patentees.  And they are equally clear that limiting or abandoning the written description requirement would exacerbate the litigation difficulties they face that have motivated them to promote sweeping "reform" of U.S. patent law.

These concerns arise in the amici's Statement of Interest:

Having obtained a number of patents based on their own extensive research and development efforts, and having also been improperly charged with infringing others' patented technology, amici have a strong interest in a fair and rational patent system.  Amici have seen up close the important role that the written description requirement plays in reducing uncertainty and distinguishing legitimate from abusive patent applications.

Moreover:

Because the written description requirement serves the vital purpose of reducing uncertainty posed by ambiguous claims, its evisceration would stifle the very innovation the patent laws are designed to encourage.  Such uncertainty creates opportunities for speculative patent litigation that plagues high-technology companies and diverts resources from research and development to legal budgets.  This problem would get markedly worse if the written description requirement were eliminated.

And reducing the requirement to enablement would not suffice:

The purposes of the written description requirement are not adequately served by the separate enablement requirement, in part because enablement takes account of not only the patent's specification, but also additional knowledge of a person skilled in the art.  For that reason, an "invention" might be enabled by a specification even if the patent applicant had not thought of it or intended to claim it at the time the patent application was filed.

Perhaps wisely, the first section of the brief essays Supreme Court precedent relating to the importance of the written description as a requirement under U.S. patent law from the first years of the Republic, citing Grant v. Raymond (1832), Evans v. Eaton (1822) (the written description must "put the public in possession of what the party claims as his own invention") and O'Reilly v. Morse (1853).  These cases all stand for the same principle, they assert, that the written description is "the cornerstone of the quid pro quo underlying all patent rights:  a patent holder is entitled to exclusivity for a period of years, but only for things the applicant actually invented and disclosed to the public."  This focus on the correspondence between the scope of the claims and the extent of the disclosure (and how the written description requirement acts to ensure the correspondence thereof) is the principal theme of the brief.  The brief does not limit its citation of precedent to 19th Century cases, citing Schriber Schroth Co. v. Cleveland Trust Co. (1938) for the principle that "the patent monopoly does not extend beyond the invention described . . . it cannot be enlarged by claims in the patent not supported by the description."  This citation supports their argument that the Court has recognized a separate written description requirement, since in the Schriber Schroth case the patent was invalidated because the accused infringing article "'was not the invention which [the patentee] described' in the specification."  Morse is cited for the same proposition, whereby amici argue that Morse's claims that were invalidated sought to include "'a manner and process which he ha[d] not described and indeed had not invented, and therefore could not describe when he obtained his patent'."  Also cited is Festo Corp. v. Shoketsu Kinzoku Kogyo Kabuchiki Co., where the Court opined that "the patent application must describe, enable, and set forth the best mode of carrying out the invention."  (Indeed, in view of the Federal Circuit's almost obsequious adherence to Supreme Court precedent recently -- in cases such as In re Bilski and in response to the Court's decisions in KSR International Co. v. Teleflex Inc. and Medimmune, Inc. v. Genentech, Inc.), this argument may provide the majority with a rationale to let the Supreme Court decide the question by merely upholding the status quo.)  According to amici, this statement "reinforces" the conclusion that the statute contains separate enablement and written description requirements.  They also cite Festo as requiring that "[w]hat is claimed by the patent application must be the same as what is disclosed in the specification; otherwise the patent should not issue" (which they argue the Court found to be a requirement separate and distinct from "the other requirements – enablement and best mode – of §112").

Amici take the opportunity in this portion of the brief to address -- and rebut -- Ariad's contention that the Supreme Court's earlier precedent stemmed from the form of patents prior to the 1836 Act, whereby patents did not include "peripheral" claims -- i.e., that the Court's emphasis on the description was due to inventions being described solely by the description in the patent.  This argument does not refute the clear indication in Schriber-Schroth, Morse, and Festo, they argue.  Nor has anything been changed in the current form of the statute, according to amici, here refuting the "misplaced comma" argument advanced by Ariad (that proper sentence construction makes significant the comma following the word "invention" in the portion of the statute that reads:  "The specification shall contain a written description of the invention, and of the manner and process of making and using it, . . .").  According to this portion of amici's argument, Ariad's construction would render superfluous the phrase "and of the manner and process of making and using it," because if the intent was merely to require enablement, the remainder of the statutory language would accomplish that without this phrase.  Since statutory construction eschews interpretations that make language mere surplusage, amici argue that Ariad's interpretation must be erroneous.

The next portion of the argument regards the role of the written description requirement in preventing patentees from claiming what they have not invented.  This behavior takes two forms:  first, advocating claim construction that extends beyond what is supported by the specification, and second pursuing claims that likewise are beyond the scope of what the inventors have invented.  The risk of abolishing the written description requirement would be to encourage patentees to "disclose narrowly and claim broadly," say amici.  The consequence according to amici would be "[a] zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims [that] would discourage invention only a little less than unequivocal foreclosure of the field," citing United Carbon Co. v. Binney & Smith Co. (1942).  This ambiguity is a real threat, the amici assert, because claims and their interpretation do not "provide reasonable certainty."  Citing the Federal Circuit's Phillips v. AWH Corp. and Exxon Research & Eng'g Co. v. United States, they argue that even claims that are not "insolubly ambiguous" can give rise to "difficult issue[s] of claim construction," and that the specification is the source of public notice of what a patent "does and does nor claim."

These amici then argue that they have had "first hand experience with the problems stemming from overbroad and ambiguous patent grants."  They cite academic commentary to the effect that software patent claims are particularly difficult to properly construe and that "[n]umerous ambiguous patent claims are asserted against amici and other high tech companies each year."  Indeed, they state that the very possibility that claims may be broadly construed "inflates the valuation" of such patents (citing Lemley and Shapiro, 2005) and they cite the FTC Report (2003) and Michael Heller's book (2008) that the need to confront "the jaw dropping number of patents" impedes innovation (under the current interpretation of the written description requirement).  This situation makes difficult if not impossible the task of determining whether there is freedom to operate, and that "technology companies are regularly forced to defend against litigation involving patents with ambiguous claim scopes."  Litigation, of course, is costly, and these costs "divert resources from innovation" and represent "wasteful transaction costs."  The role of the written description requirement in mitigating such adverse consequences in "critical," amici argue.  Indeed, that it may be difficult to accurately put into words the metes and bounds of patent claims "is a reason to require more description, not less," they say.  And citing Schriber-Schroth, this is why the Supreme Court has required a written description "to ensure that the patent grant does not exceed the inventor's disclosed contribution."

In addition to the role of the written description requirement to proscribe construction of claims that exceeds the extent of the disclosure in the specification, amici argue that the requirement also prevents an applicant from "abusing" amendment and continuation practice in the Patent and Trademark Office.  Such abuse was famously the thesis of Professor Lemley and (now) Federal Circuit Judge Moore and was the theoretical underpinning of the Office's ill-fated and now-withdrawn claim and continuation rules that were the subject of judicial challenge in Tafas v. Kappos.  Amici argue that the written description requirement is the guardian against such "overreaching" by patent applicants.  They cite the practice of "seemingly endless continuations" made (according to them) "in order to hold them open for future amendments."  (Like Lemley and Moore, amici fail to recognize that such continuations are frequently necessary, especially in complex arts like biotechnology, to obtain claims having a scope appropriate to the applicant's written description and to which their specification entitles them.)  They also argue that applicants assert the right (purportedly improperly) to submit claims in such continuation applications that encompass subject matter not disclosed in the specification and in fact developed by their competitors.  "[T]he amendment and continuation practice, without the discipline of the written description requirement, engenders significant potential for abuse" they argue, citing another Lemley and Moore paper on the subject.  This role for the written description requirement is supported by amici with a quotation from Schriber-Schroth, that "the patent . . . cannot be enlarged by claims in the patent not supported by the description."

In another savvy argument, amici contend that Congress has endorsed this aspect of the written description requirement when establishing the priority right for provisional, divisional, and continuation applications:  in each instance the statute requires that a priority date will be granted only if the invention is disclosed in the manner provided by the first paragraph of section § 112 (35 U.S.C. § 119(e)(1) and 35 U.S.C. § 120).  They further argue that these statutory provisions refute Ariad's assertion that Congress intended the written description requirement to be limited to "subsequent and not original claims," since the priority requirements in the statute do not differentiate between claims present in the application as filed and those submitted by amendment thereafter.

Amici then rebut Ariad's argument that other sections of the statute -- notably, the enablement provisions of § 112 -- can be sufficient to satisfy the proper limitation on claim scope.  In addition to arguing that such an interpretation is contrary to proper statutory construction principles and prior Supreme Court precedent, amici distinguish the roles of the enablement and written description requirements based on the scope of the considerations applied to determine compliance with each of them.  Written description analysis is confined to what is contained within the four corners of the patent document, they argue, while enablement also takes into consideration what is known to one having ordinary skill in the art.  Once again citing Schriber-Schroth, amici argue that a specification may "enable" an invention "even if the patent applicant never thought of it and never meant to claim it," something that is particularly likely in the "more predictable arts such as engineering and computer programming."  They cite both Gentry Gallery and Tronzo (the most (in)famous non-biotech written description cases) as examples of instances where what was enabled is greater in scope than what was disclosed.  In addition to requiring the enablement statute to "take more weight than it can bear," amici argue that Section 101's "overbreadth doctrine" would also be implicated in addressing sufficiency of disclosure questions raised by elimination of the written description requirement, citing as an example the test enunciated in Gottschalk v. Benson.  However, this test "has not always proven easy to apply," they say, and "there would be costs to overburdening that test."  In short, amici argue that there is "no reason to turn to other doctrines to take the place of the foundational written description requirement."

In the final portion of the brief, amici argue that if there have been problems associated with application of the written description requirement to biotechnology claims, the solution is to address these problems by improving application of the requirement to such claims rather than "jettisoning the longstanding requirement altogether."  They cite a dozen cases concerning "claims of all stripes" that the Federal Circuit has held invalid since 2006 in support of their argument that the written description requirement has not been confined merely to biotechnology claims:  In re Reiffin, 199 F. App'x. 965, 2006 WL 2860589 (Fed. Cir. 2006) (multithreading computer application); Adang v. Umbeck, No. 2007-1120, 2007 WL 3120323 (Fed. Cir. Oct. 25, 2007) (transformed cotton plantlet); Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370 (Fed. Cir. 2007) (ball bearings); Ziarno v. Am. Nat'l. Red Cross, 55 F. App'x. 553, 2003 WL 57060 (Fed. Cir. 2003) (internet-based fundraising system); McMullin v. Carroll, 153 F. App'x. 738, 2005 WL 2840281 (Fed. Cir. 2005) (golf shoe cleat); LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005) (method for eliminating edge artifacts); Energizer Holdings, Inc. v. ITC, 275 F. App'x. 969, 2008 WL 1791980 (Fed. Cir. 2008) (mercury free alkaline batteries); In re Curtis, 354 F.3d 1347 (Fed. Cir. 2004) (dental floss); McKechnie Vehicle Components USA, Inc. v. Lacks Indus., Inc., 122 F. App'x. 482, 2005 WL 121840 (Fed. Cir. 2005) (automobile wheel covering); PIN/NIP, Inc. v. Platte Chem. Co., 304 F.3d 1235, 1248 (Fed. Cir. 2002) (tuber sprout growth inhibitor); Williams v. Gen. Surgical Innovations, Inc., 60 F. App'x. 284, 2003 WL 932449 (Fed. Cir. 2003) (removal of tissue expander during surgery).

Interestingly, amici note that Ariad does not cite a single biotechnology case that had been decided incorrectly based on an application of the written description requirement except its own.  Ariad argues that the claims in earlier biotechnology cases may have been invalid on enablement grounds, something Judge Linn (in concurring on the panel majority's opinion) opined may also be the case for Ariad's claims.  In this regard they make an important point:  the written description requirement is a question of fact, and fact-based inquiries "will necessarily vary depending on the nature of the invention claimed," citing Enzo Biochem Inc. v. Gen Probe Inc.  "Even if Ariad were correct that this Court's written description jurisprudence had been too rigid for some biotechnology inventions, the solution would be to apply the requirement more contextually, on a case-by-case basis, to such inventions -- not to eviscerate completely this longstanding and foundational requirement for all inventions."

In a brief colored heavily by their own industry's particular concerns, these amici raise for the Federal Circuit's analysis several important considerations that apply (perhaps to varying degrees) to all technologies.

For additional information regarding this topic, please see:
• "Amicus Briefs in Ariad v. Lilly:  Professor Christopher Holman," November 19, 2009
• "Lilly Files Principal Brief for Ariad v. Lilly Rehearing En Banc," November 16, 2009
• "Next Up: Ariad v. Lilly Rehearing En Banc," November 10, 2009
• "Federal Circuit Grants En Banc Review in Ariad v. Lilly," August 21, 2009
• "Ariad Files Petition for Rhearing in Ariad v. Lilly," June 3, 2009
• "Ariad Decision Voids Attempt to Use Broad Claiming to Avoid the Written Description Requirement," April 14, 2009
• "Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co. (Fed. Cir. 2009)," April 6, 2009

Comments

[EG]

Kevin,

Interesting that Google et al. refer to themselves as "innovative leaders in the high-technology and computer-related
fields." Others, including smaller software and computer-related companies, might not refer to Google et al. as innovative, but in fact, as "thieves" of innovation.

On balance, I think the case law favors a separate "written description" requirement. Having a separate "written description" requirement is especially important in pinning down what the inventor(s) truly regard as his/her/their invention at the time the application is filed. The "enablement" requirement doesn't and wasn't intended to do that.

One of my beefs with the separate "written description" requirement is how it is applied by the Federal Circuit in a manner to the biotech field that appears disproportionally different from other technical fields. At the very least, the en banc Federal Circuit in Ariad needs to clarify that the standard for the "written description" requirement is the same no matter what the technical field is.

But my biggest beef is how certain members of the Federal Circuit, especially Judge Lourie, play fast and loose with the standard of review when they rule on a "written description" requirement issue. As the Google et al. brief correctly states, the "written description" requirement is a "question of fact" which requires "the clearly erroneous" standard for appellate review. But Judge Lourie in particular acts as if the "written description" requirement is subject to "de novo" review, i.e., as if it were a question of law. Put differently, if the "written description" requirement is a "question of fact," it should be treated as such on appellate review.

[Lawrence B. Ebert]

The issue expressed in the text -- They also argue that applicants assert the right (purportedly improperly) to submit claims in such continuation applications that encompass subject matter not disclosed in the specification and in fact developed by their competitors. -- was discussed in JPTOS, pp. 743-746 (Sept. 2006).

Nuances related to the JPTOS article appear in
http://ipbiz.blogspot.com/2006/10/kintisch-article-in-science-challenged.html

[6]

huzzah!