Written Description Under Section 112 Should be an Applicant's First Priority

Poweroasis, Inc. v. T-Mobile USA, Inc., [2007-1265 ] (April 11, 2008) [MOORE, Newman, Schall] The Federal Circuit affirmed summary judgment of invalidity of the asserted claims of U.S. Patent Nos. 6,466,658 and 6,721,400, because the claims were not entitled to priority from the parent application.
SIGNIFICANCE: Claims in continuation-in-part application must be supported bu parent application in order to claim priority from parent application
BRIEF: In the patents in suit, Poweroasis described and claimed an interface for vending machines that could reside on a user’s laptop computer, these patents claimed priority from an earlier patent application that merely referenced a user interface. Poweroasis needed to claim priority to its parent application. The Federal Circuit said that application of the written description requirement was central to the resolution of the appeal. The Federal Circuit said: “It is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” To satisfy the written description requirement the disclosure of the prior application must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, the inventor was in possession of the invention. While a prior application need not contain precisely the same words as are found in the asserted claims, the prior application must indicate to a person skilled in the art that the inventor was “in possession” of the invention as later claimed. The Federal Circuit said that to satisfy the written description requirement, “the missing descriptive matter must necessarily be present in the original application’s specification such that one skilled in the art would recognize such a disclosure. It is not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure. Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.
LOF: Compliance with the written description requirement is a question of fact. The Federal Circuit said that the district court’s determination that the original application did not provide a written description of “customer interface” as set forth in the asserted claims was correct. The original application described a vending machine with a “display” or “user interface” as part of the vending machine, rather than a vending machine with a “customer interface” located on a customer’s electronic device. The only support for the broad construction urged for the term “customer interface” was in the continuation in part applications, and thus Poweroasis was not entitled to priority of the parent applications and its later patents were anticipated. The Federal Circuit affirmed the district court.