Claims included in an original patent application are part of the written description, which is why the Federal Circuit reversed a summary judgment that claims of U.S. Patent No. 6,947,882 were invalid for lack of written description support under 35 U.S.C. § 112. Mentor Graphics Corp. v. EVE-USA, Inc., Nos. 2015-1470, 2015-1554, 2015-1556 (Fed. Cir. March 16, 2017) (opinion by Judge Moore, joined by Judges Lourie and Chen) (precedential). As mentioned in yesterday’s post, discussing the court’s consideration of the question of indefiniteness, this case covered a lot of issues; this post focuses on the court’s consideration of Section 112’s written description requirement.
Claims 7, 9, and 13 of the ’882 patent recite that “the signal routing clock is independent of the first clock signal and the second clock signal.” The district court had found that this language lacked written description support, stating that
The 882 Patents [sic] specification describes the minimum frequency relationship between the signal routing clock signal and the first and second clock signals as an exception to independent clocking. As a result, the specification does not demonstrate possession of the unqualifiedly independent clocking that the asserted claims require, and the claims do not meet the written description requirement.
The Federal Circuit, applying de novo review, disagreed. Responding to arguments that the Specification disclosed only clocks with a dependent relationship, and not an “independent signal routing clock,” the court explained that “[t]he very language of claim 1 which the court held was not supported by the specification was present in the originally-filed claims.” Lest we forget, “[o]riginal claims are part of the original specification and in many cases will satisfy the written description requirement.” Here, claim 1 as originally filed had “the precise language the district court found missing from the ’882 specification.”
Other jurisdictions may not be as flexible as the U.S., and for this reason, depending on your filing strategy, it may make sense to avoid arguments, and provide literal support in your specification for claims being filed. That said, next time an examiner tells you that claim isn’t supported by your specification, that isn’t the end of the story. What did the claim say when originally filed? The real question is not one of written description, but rather whether one skilled in the art would have understood it.