Written Description Woes

In the recent  oral argument of Finn v. Rea, App. No. 2012-1635 (Fed. Cir. Oct. 16, 2013) a panel of the Federal Circuit once again dealt with a written description issue.  The panel confronted the tension in the court’s case law between cases like In re Huston, 308 F.3d 1267, 1277 (Fed. Cir.2002) which states that for written description:

“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed. It extends only to that which is disclosed” (citing Lockwood v. American Airlines, 107 F.3d at 1571-72 (Fed. Cir. 1997)

and cases like Nazomi Communications, Inc. v. ARM Holdings, PLC, 403 F.3d 1364, 1369 (Fed.Cir.2005) which was cited by the court in Philips v. AWH, 415 F.3d 1303 (Fed. Cir. 2005)(en banc) and noted that for purposes of claim construction claims may embrace “different subject matter than is illustrated in the specific embodiments in the specification.”

Judge Taranto framed the question this way [Listen], while Judge Prost asked where the line should be drawn in this way [Listen].

Judge Taranto also noted that in the past he had tried to think of written description by asking whether the difference between what was originally described and what is now claimed raises any non-trivial technical issues that somebody would have to solve: [Listen].

You can listen to the entire oral argument here: [Listen].

You can read the court’s Rule 36 Judgment here: [Read].

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