SEEKING GUIDANCE ON WRITTEN DESCRIPTION REQUIREMENT? COME TO CHICAGO ON THE WEEK OF NOV. 7: Recently, the case of Lizardtech vs. Earth Resource Mapping has caused quite a stir in the patent community, where a claim from Lizardtech's '835 patent was invalidated by the Federal Circuit under 35 USC 112, first paragraph for failing the written description requirement.

Lizardtech basically disclosed one embodiment in the specification, but then tried to claim a much broader (i.e., generic) scope in one of the claims (claim 21). While a claim will not be invalidated on section 112 grounds simply because the embodiments of the specification do not contain examples explicitly covering the full scope of the claim language, the court ruled that LizardTech overreached in trying to claim all possible variations of a claim feature that was defined only in terms of a specific embodiment. Concerns were immediately raised, questioning whether the disclosure of a single embodiment opened up applications to attacks under section 112.

By fortuitous coincidence, The John Marshall School of Law in Chicago will be hosting a free seminar on November 7, where two judges from the Federal Circuit, along with Judges James E. Holderman and Matthew F. Kennelly from the Northern District of Illinois will be discussing "The Enablement/Written Description Debate of Patent Law." If you have any questions about the future of the enablement requirement, this would be a good time to ask.

However, my take on the Federal Circuit's decision was that it was not that earth-shattering as some have suggested. Without getting into too much detail on the technology involved (ERM has a discussion on the technology here, see also the decision linked above), this is the gist of the decision in terms of the 112 arguments:

Lizardtech's disclosure discussed a method of viewing images at multiple resolutions by creating an array of "seamless discrete wavelet transformation (DWT) coefficients." Under the embodiment disclosed, the DWT coefficients were made "seamless" by "maintaining updated sums" of DWT coefficients. No other ways of creating seamless DWT coefficients were disclosed.

The problem with claim 21 was that this feature was absent from the claim. The prosecution history showed that the allowability of the claim was based on arguments pertaining to the seamless feature, but the only way the disclosure taught seamless DWT's was by maintaining the updated sums (you can see the circular logic here):

The trouble with allowing claim 21 to cover all ways of performing DWT-based compression processes that lead to a seamless DWT is that there is no support for such a broad claim in the specification. The specification provides only a single way of creating a seamless DWT, which is by maintaining updated sums of DWT coefficients. There is no evidence that the specification contemplates a more generic way of creating a seamless array of DWT coefficients.

After reading the patent, a person of skill in the art would not understand how to make a seamless DWT generically and would not understand LizardTech to have invented a method for making a seamless DWT, except by "maintaining updating sums of DWT coefficients."

If the seamless feature of claim 21 had been interpreted as maintaining updated sums, then the claim would not have been differentiated from claim 1, which explicitly recited this feature. Stuck between a rock and a hard place, the Federal Circuit was forced to invalidate the claim.

I do agree that the lesson to be taken away from this is that alternate embodiments or alternate features should be disclosed whenever possible. However, it is often the case that the technology "is what it is" - you can only claim what you know at the time the application is being drafted. Not being an expert on finite impulse response filters, I don't know if Lizardtech could have done anything differently in its application. Were alternate embodiments even available during that time? Only the inventors would know the answer to that question.