Beyond words: Federal Circuit faults PTAB’s written description analysis
The Patent Trial and Appeal Board (PTAB) doesn’t always get it right. This was demonstrated once again in a case where the U.S. Court of Appeals for the Federal Circuit found that the board had improperly failed to consider some vital factors when evaluating whether a patent application contained the requisite written description of the invention.
A question of plasticity
Global IP Holdings LLC owns a patent on carpeted automotive vehicle load floors that have sandwich-type composite panels with cellular cores. The patent describes the load floors as including thermoplastic materials. Global filed a reissue application seeking to broaden the patent’s coverage. In particular, it replaced the term “thermoplastic” with “plastic.”
The U.S. Patent and Trademark Office’s rules for reissue applications require an inventor to provide an oath or declaration specifically identifying the error relied on as the basis for reissue. The load floor’s inventor filed a declaration explaining that, at the time of the invention, he was aware of the use of plastics other than thermoplastics for the composite panel. He also cited other evidence of the use of thermoset plastics, rather than thermoplastics, in vehicle load floors. The examiner, however, rejected the broadened claims, finding that they claimed “new matter.”
The PTAB affirmed, rejecting Global’s argument that the type of plastic used wasn’t critical to the invention and that plastics other than thermoplastics were predictable options. The PTAB found that the description of the invention in the patent specification was insufficient, “regardless of the predictability of the results of substituting alternatives, or the actual criticality of thermoplastics in the overall invention.” Global appealed to the Federal Circuit.
Rejection of PTAB’s rigidity
The Federal Circuit began its review by explaining that the written description requirement is met when the patent specification clearly allows people in the field to recognize that the inventor “invented what is claimed” in the patent. According to the court, the test is met if the patent specification reasonably conveys to people knowledgeable in the relevant field that the inventor had possession of the invention as of the filing date.
The level of detail required to satisfy the written description requirement, the court said, varies depending on the nature and scope of the patent claims and the complexity and predictability of the relevant technology. Therefore, the Federal Circuit found that the PTAB had erred by finding that the predictability of submitting generic plastics for thermoplastics wasn’t relevant to the written description requirement.
In addition, the court noted that it had held in a previous case that the criticality, or importance, of an unclaimed patent limitation can be relevant to the written description inquiry. Patent limitations define the breadth of the claimed invention.
The earlier case involved a patent application that required a metal tip with a tapered shape. The patent owner in that case filed a reissue application to cover both tapered and nontapered tips. The PTAB rejected the application because the only tips disclosed in the original application were tapered. But the court found that the broadened claims merely omitted an unnecessary limitation that had restricted one element of the invention to the exact and noncritical shape disclosed in the original patent.
The Federal Circuit here held that, in some cases, the criticality or importance of the expressly disclosed “species” (such as thermoplastics) may be relevant to whether an inventor had possession of the claimed “genus” (such as plastics) that includes that species.
The case bounces back
Although the appellate court vacated the PTAB’s decision, it declined Global’s request to find that the plastic limitation wasn’t critical to the invention. Instead, the Federal Circuit sent the case back to the PTAB to address the relevant factors, including predictability and criticality, and determine whether the written description requirement was satisfied.
In re: Global IP Holdings LLC, No. 18-1426, July 5, 2019, Fed. Cir.