June 27, 2017

Written Description Must Support Claims; Not Exclude Alternatives

In The Board of Trustees of the Leland Stanford Junior University v. The Chinese University of Hong Kong, [2015-2011] (June 27, 2017), the Federal Circuit vacated the PTAB’s determination in an interference that Stanford’s claims were unpatentable for lack of written description, because the Board relied on improper evidence to support its key findings and did not cite to other substantial evidence to support its findings.

Whether a patent claim satisfies the written description requirement of 35 U.S.C. § 112, paragraph 1, depends on whether the description clearly allows persons of ordinary skill in the art to recognize that the inventor invented what is claimed.  Substantial evidence supports a finding that the specification satisfies the written description requirement when the essence of the original disclosure conveys the necessary information — regardless of how it conveys such information, and even when the disclosure’s words are open to different interpretations.

The Board determined that Stanford’s patent does not disclose the random massively parallel sequencing of nucleic acid sequences claimed in the later-added claims such that a person of skill in the art would have concluded that Stanford professor Stephen Quake and his lab were in possession of the method claimed.  The Board concluded from the language of the specification that the specification referred to targeted, rather than the claimed random, sequencing.  The specification specifically mentioned an Illumina sequencer, but in evaluating the specification, the Board relied upon information about a Roche sequencer.  Further, the Board’s finding that the language did not exclude targeted sequencing ignores the fact the description might support both random and targeted sequencing.

The Federal Circuit said that the Board’s task was to determine whether the specification’s description discloses random sequencing, as recited by the later-added claims, not whether the description does not preclude targeted MPS sequencing.  The Federal Circuit said that the Board’s error on this issue is compounded by its failure to explain the meaning of key sentences and phrases in the specification’s discussion of the sequencing process, and its failure to compare these statements to the claim limitations.

For these reasons the Federal Circuit vacated the interference decisions and remanded for the Board to reconsider whether Quake’s relevant patents and applications satisfy the written description requirement.  The Federal Circuit specifically instructed the Board to examine whether a person of ordinary skill in the art would have known, as of the priority date, that the specification’s reference to Illumina products meant random sequencing as recited in the claims, by examining the record evidence as to pre-filing date art-related facts on Illumina products.  The Federal Circuit said that the Board may include an analysis of whether the record contains testimony or evidence, relevant to this written description analysis, showing that any post-filing date publications contain art-related facts on random sequencing or Illumina products existing on the filing date.