Federal Circuit En Banc Decision Confirms Written Description is Separate from Enablement

In Ariad Pharmaceuticals, Inc., et a. v. Eli Lilly and Co., 598 F3d 1336, 94 USPQ2d 1161 (Fed. Cir. 2010) (en banc), the Federal Circuit reversed the district court’s denial of a JMOL and held that the asserted claims of U.S. Patent No. 6,410,516 are invalid as failing to meet the statutory written description requirement.   As background, the plaintiffs (herein, collectively referred to as “Ariad”) are the owners of U.S. Patent 6,410,516 (“the ’516 patent”). The patented technology relates to a method of reducing the activity of NF-κB, a transcription factor, in eukaryotic cells. Briefly, NF-κB is a substance that normally exists in cells as an inactive complex with a protein inhibitor, IκB. When a cell encounters extracellular stimuli, such as lipopolysaccharides from a bacterial invader, NF-κB is released from its inhibitor and travels to the cell nucleus, where it binds to NF-κB recognition sites to crank up the production of cytokines that stimulate the immune system to fight the invaders. However, the production of too many cytokines is also harmful to an organism.  The inventors of the ’516 patent were the first to identify NF-κB and discovered its mechanism of activating gene expression. The inventors also came up with the idea that it would be useful under certain circumstances to reduce NF-κB activity in cells. Continue reading

Feature Comment: The Heightened Disclosure Requirement for Software Claimed Using Means-Plus-Function Limitations

By Gregory L. Clinton[1]

I.        INTRODUCTION

The question of whether a computer component discloses adequate structure for a corresponding means-plus-function claim limitation has been a recurrent issue in recent Federal Circuit jurisprudence, most recently in the cases of Blackboard Inc. v. Desire2Learn Inc., 91 U.S.P.Q.2d 1481, 1483 (Fed. Cir. 2008).  and Net MoneyIN Inc. v. VeriSign Inc., 88 U.S.P.Q.2d 1751 (Fed. Cir. 2008).    In both cases the specification of the patents at issue did not provide adequate support for means-plus-function limitations in the claims.  Although the use of means-plus-function claims has fallen out of favor in recent years, means-plus-function claims remain useful in some situations.  Accordingly, a brief discussion on what to include in a specification to ensure proper support for such claims may be helpful to avoid problems during prosecution or litigation

II.       ENABLEMENT OF SOFTWARE MEANS-PLUS-FUNCTION CLAIMS

Both of the two cases previously mentioned, Blackboard and Net MoneyIN, revolved in part around whether the specification provided adequate support for particular mean-plus-function limitations.  In both cases, the specification was found not to provide adequate support because the specifications merely described a general purpose computer, without any corresponding “structure” to which the means-plus-function claims could be tied.  In Blackboard, the patent was directed toward an Internet-based educational support system.  Blackboard Inc. v. Desire2Learn Inc., 91 U.S.P.Q.2d 1481, 1483 (Fed. Cir. 2008).  The claim limitation at issue recited “means for assigning a level of access to and control of each data file based on a user of the system’s predetermined role in a course…”  Id. at 1490.  Blackboard argued that the corresponding structure was an “access control manager” disclosed in the specification, citing to a particular paragraph describing the access control manager in largely functional terms.  Id.

The district court disagreed, finding the specification lacking the necessary structure to support the “means for assigning”, and the Federal Circuit affirmed.  Blackboard at 1490.  The Federal Circuit found that the access control manager was nothing more than a “black box”.  Id.  The specification provided no insight as to how the access control manager carried out the disclosed functionality.  Id.  In particular, the specification did not describe the structure of the access control manager or explain the process by which the access control manager performed the disclosed function.  Id.

The Federal Circuit rejected Blackboard’s arguments that the disclosed access control manager could be any computer device or program that performs the function of access control.  Blackboard at 1491.  The Federal Circuit viewed the argument as an attempt to avoid the requirement to disclose the structure associated with the means-plus-function limitation.  Blackboard was attempting to avoid the “price” of the means-plus-function limitation (namely, the requirement to disclose the corresponding structure) by attempting to claim the structure in purely functional terms, without any limit imposed by a structure disclosed in the specification.  Id.  What is important, the Federal Circuit held, was the means for achieving the intended outcome, not a mere description of that outcome.  Id.

One of the cases cited in the Blackboard decision, Net MoneyIn, Inc.  v. Verisign, Inc., expanded on the requirements in the disclosure for means-plus-function claims and computer-related structures.  The limitation in that case was a “means for generating an authenticating indicia” as part of a recited “first bank computer”.  Net MoneyIn, Inc. v. Verisign, Inc., 88 U.S.P.Q.2d 1751, 1755 (Fed. Cir. 2008).  After concluding that the limitation was properly construed as a means-plus-function limitation, the Federal Circuit looked to the specification for the corresponding structure, and found only a description of a general purpose bank computer that could be programmed to perform the recited function.  Id

The Federal Circuit reviewed prior holdings that the structure disclosed in the specification must be more than simply a general purpose computer.  Net MoneyIN at 1755.  If the disclosed structure is a computer, then the disclosure must be directed not to the general purpose computer itself, but to the algorithm which the general purpose computer is programmed to perform.  Id.  The operation of the algorithm performed by the general purpose computer transforms the general purpose computer into a special purpose computer designed to perform the disclosed algorithm.  Id.  Thus, if the specification fails to disclose the algorithm performed by the general purpose computer to carry out the recited function, then the claim is invalid under 35 U.S.C. § 112 for failing to disclose the necessary structure corresponding to the means-plus-function limitation.  Id. at 1757.

A.  GENERAL PURPOSE COMPUTER PERFORMING A DISCLOSED ALGORITHM

The Federal Circuit’s decision in the Blackboard and Net MoneyIn cases relied on its prior decision in WMS Game Inc. v. Int’l Game Tech., which in turn drew upon the landmark State Street Bank and Alappat decisions.  The patent at issue in WMS Gaming was directed toward an improved slot machine.  WMS Gaming, Inc. v. Int’l Game Tech., 51 U.S.P.Q.2d 1385, 1387 (Fed. Cir. 1999).  In traditional mechanical slot machines, reducing the probability of winning required either increasing the number of reels in the machine or increasing the number positions in each reel, neither of which appealed to players.  Id. The patent at issue in the case disclosed an electronically controlled slot machine.  Id.  The reels in the machine served only to display the results selected by the electronic control system.  Id.  The control system randomly selects a number from a range greater than the number of positions on the reel, looks up the corresponding result in a mapping table, and controls the reels to display the selected result.  Id.

The claim term at issue recited “a means for assigning a plurality of numbers representing said angular positions of said reel, said plurality of numbers exceeding said predetermined number of radial positions such that some rotational positions are expressed by a plurality of numbers.”  The district court interpreted the term to refer to “any table, formula, or algorithm for determining correspondence between the randomly selected numbers and rotational positions of the reel.”  WMS Gaming at 1391.  The Federal Circuit, however, found this interpretation to be too broad.

The flaw in the district court’s construction, the Federal Circuit held, lay in the district court’s failure to limit the claim to the algorithm disclosed in the specification.  WMS Gaming at 13.  The Federal Circuit reasserted its opinion in Alappat that a general purpose computer programmed to perform a given algorithm in effect becomes a new computer.  The general purpose computer in effect becomes a special purpose computer performing the disclosed algorithm.  Id. (citing In re Alappat, 31 U.S.P.Q.2d 1545, 1558 (Fed. Cir. 1994)).  Thus, in the context of means-plus-function claims, the structure is not the general-purpose computer, but rather the special purpose computer programmed to carry out the disclosed algorithm.  Applying this construction to the “means for assigning” limitation, the Federal Circuit held the corresponding structure to be a processor programmed to carry out the algorithm disclosed in Figure 6 of the patent.

The algorithm was disclosed in the patent at issue in WMS Gaming in the form of a diagram illustrating the operation of the algorithm.  However, patent applicants can express the algorithm in a variety of ways.  The algorithm can be explained as a diagram (as in WMS Gaming), as a mathematical formula, as a flowchart, or in prose. See Finisar Corp. v. DirecTV Group, Inc., 86 U.S.P.Q.2d 1609, 1623.

B.  SPECIAL PURPOSE COMPUTER

The Federal Circuit’s justification for defining algorithms as the important element for computer-related structures corresponding to a means-plus-function limitation relies upon the concept that a general purpose computer performing a disclosed algorithm can be seen as a special-purpose computer programmed to perform the function.  From this premise, it follows that a special-purpose computer could also be used as a sufficient structure.  Instead of disclosing an algorithm and a general-purpose computer to perform the algorithm, a patent applicant can instead disclose a special-purpose computer as the corresponding structure for a means-plus-function limitation.  Such a disclosure could come in the form of, for example, a detailed circuit diagram or schematic of the individual components of the special purpose computer.  A patent applicant may find such an alternative useful in situations where the novelty or inventive aspect lies more in the structure of the component than in the algorithm to be performed.

III.  EXAMPLES

Federal Circuit jurisprudence permits the algorithm to be disclosed in a variety of ways.  The algorithm may be disclosed by a flowchart, a diagram, a formula, or prose.  Finisar at 1623.  Several cases illustrate the variety of ways in which a patent can disclose the necessary algorithm to support a means-plus-function case.  For example, the algorithm in WMS Gaming was disclosed by a combination of prose description in the specification and a figure.  See U.S. Patent No. 4,448,419 at Fig. 6 and col. 4, line 55 – col. 5, line 5.

In Harris Corp. v. Ericsson Inc., the algorithm was disclosed in a flowchart and corresponding textual description.  Harris Corp. v. Ericsson Inc., 75 U.S.P.Q.2d 1705, 1714 (Fed. Cir. 2005) (citing to various portions of U.S. Patent No. 4,365,338, including a flowchart shown in Figs. 8A and 8B).  The Federal Circuit disagreed with the district court’s finding that the recited “time domain processing means” corresponded to the disclosed “symbol processor”, because the symbol processor did not incorporate a disclosed algorithm.  The Federal Circuit instead found the disclosed structure to correspond not only to the symbol processor (which in turn included a support processor and a fast array processor) but also to a data recovery algorithm performed by the support processor.  Id.  The data recovery algorithm was disclosed in the specification as a flowchart diagram and corresponding description.  SeeU.S. Patent No. 4,365,338 at Figs. 8A, 8B, and 9.

The knowledge of a person of ordinary skill in the art can also support a disclosed structure or algorithm.  The patent at issue in AllVoice Computer PLC v. Nuance Communications Inc. recited an “output means” as a part of a system to facilitate speech recognition.  AllVoice Computer PLC v. Nuance Communications Inc., 84 U.S.P.Q.2d 1886, 1891.  AllVoice’s patent was directed toward an interface that converted spoken words into a data format compatible for word processors.  Id. The specification disclosed a speech recognition interface which, as part of its functionality, received a translated word and output the word via a dynamic data exchange (DDE) protocol.  Id.  Expert testimony established that this protocol was well known to persons of skill in the art of Windows programming.  Id. Thus, the person of ordinary skill in the art would have been well apprised of a structure corresponding to the disclosed DDE protocol. 

The AllVoice decision contrasts with the Blackboard and Net MoneyIn cases discussed above.  In both cases, the patentee attempted to rely upon the knowledge of a person of ordinary skill in the art to support the disclosed structure, but of the three, only AllVoice succeeded in convincing the Federal Circuit.  The distinguishing feature lies in the  extent to which the parties relied upon the knowledge of the person of ordinary skill in the art.  The disclosures of the Net MoneyIN patent and the Blackboard patent contained no element or internal structure of the various components.  The components were simply “black boxes” that a person of ordinary skill in the art could have programmed to perform the recited function.  Compare Net MoneyIN, 88 U.S.P.Q. 2d at 1756 and Blackboard, 91 U.S.P.Q.2d at 1491.  However, the disclosure of the AllVoice patent described the structure of the component in terms that would be understood by a person of ordinary skill – namely, the DDE component, which was a structure known in the art for carrying out a particular function.  This provided enough structure to render the corresponding means limitation definite.

IV.  CONCLUSION

As can be seen in the above cases, patent application drafters should pay special attention to the specification if means-plus-function claims are to be used.  If computer components are to be disclosed as the structure corresponding to a means-plus-function, either the specific structure of the corresponding component(s) should be disclosed (i.e. a special-purpose computer), or the algorithm carried out by the corresponding component(s) should be disclosed.  The algorithm can be disclosed in a variety of ways, including flowcharts, written explanation, diagrams, mathematical formulae, or a combination of these.  By disclosing the algorithm and the particular components, the careful patent drafter can avoid the definiteness problems that arose in Net MoneyIN and Blackboard.


[1] Gregory L. Clinton is an associate at Stein McEwen, LLP.  The opinions in this article do not represent the official positions of Stein McEwen, LLP.

Federal Circuit Holds Standard for Claim Interpretation for Purpose of Interference Is Distinct For Claim Interpretation for Purposes of 35 U.S.C. §§102 & 112

In Agilent Tech., Inc. v. Affymetrix, Inc., Civ. Case No. 2008-1466 (Fed. Cir. June 4, 2009), Agilent owns Schembri patent 6,513,968 (“Schembri”) issued on February 4, 2003 and claimed priority to an application filed August 21, 1998.  Affymetrix believed it had earlier invented the claimed methods of the Schembri patent and copied the claims of the Schembri patent into its Besemer patent application 10/619,244 (“Besemer”) to provoke an interference.  The Besemer application claimed priority through a string of continuations to a patent application filed June 7, 1995, which made Affymetrix the senior party to the interference under 37 C.F.R 2.96.

The disputed claims in the Besemer application and the Schembri patent deal with “microarray hybridization,” which is a technique for performing multiple genetic analyses on a small fluid sample.  Specifically, claim 20 of the Schembri patent and claim 66 of the Besemer application relate to a method for mixing a fluid sample during hybridization, by providing and moving a bubble in a fluid in a closed chamber. (Schembri Patent col. 10 ll. 33-45, Besemer application at 39).

Agilent filed a motion before the Board challenging the validity of the copied claims in the Besemer application, asserting that the written description was inadequate under 35 U.S.C. §112, ¶ 1, to show actual possession of the bubble-mixing invention.  The Board found that the Besemer application showed support for the claimed invention, awarded priority to Affymetrix, and cancelled the contested claims of Agilent’s Schembri patent. 

Agilent appealed to the U.S. District Court for the Northern District of California under 35 U.S.C. § 146.  The parties submitted new expert reports and testimony from their respective expert witnesses, as well as cross motions for summary judgment on the written description issue.  The District Court affirmed the Board and granted Affymetrix’s motion for summary judgment that the Besemer application satisfied the written description requirement.  Agilent appealed the District Court’s judgment regarding claim construction and the written description requirement.

First, Agilent took issue with the District Court’s use of the Affymetrix application to construe the claim language.  To determine which specification to utilize to construe the claims, the Federal Circuit looked to its prior decisions in In re Spina, 975 F.2d 854 (Fed. Cir. 1992), and Rowe v. Dror, 112 F.3d 473 (Fed. Cir. 1997).

In Spina, the applicant copied a claim from the “Barron” patent to provoke an interference, similar to Affymetrix’s actions.  The Board viewed the claim in light of the Barron disclosure, from which the claim had been copied.  The Court held that this interpretation was correct.  “When an interpretation is required of a claim that is copied for interference purposes, the copied claim is viewed in the context of the patent from which it was copied.” In re Spina, 975 F.2d 854, 856 (Fed. Cir. 1992).

In Rowe v. Dror, Rowe copied several claims from the Dror patent to provoke an interference.  Dror filed a motion seeking judgment against Rowe on the ground that a third party anticipated some of Rowe’s claims corresponding to the interference count.  On appeal, the Federal Circuit held that Rowe’s specification should be used to interpret Rowe’s claims because the question was one of novelty or non-obviousness.  The Court held that the PTO should interpret the claim in light of its host disclosure, just as it would during ex parte prosecution. Rowe v. Dror, 112 F.3d 473, 479 (Fed. Cir. 1987).  The Federal Circuit also explicitly distinguished Rowe from Spina due to the different question each case answered.  The Court held that the Spina rule was applicable when the question turned on whether the copying party’s specification provided an adequate written description for the copied claims.  The Rowe rule would apply when the question of the claim’s validity under 35 U.S.C. 102 or 35 U.S.C. 103 was at issue.

In reviewing these cases, the Federal Circuit held that the Spina rule applied, and reversed the decision of the District Court which used the Affymetrix application to construe the copied claims.  The Federal Circuit also rejected Affymetrix’s argument calling for the application of 37 C.F.R. 41.200(b), which calls for the broadest reasonable construction of claim language in light of the specification in which it appears.  For support, the Court pointed to it decision in Rowe, which asserted that judicial precedent is as binding on administrative agencies as are statutes.  Thus, the Federal Circuit held that Spina would be the applicable rule for this issue, and the Agilent specification would be utilized to construe the contested claims.

The Federal Circuit then concluded that the District Court erroneously interpreted the claim term “a closed chamber” to mean “a system of enclosures.”  The District Court based its interpretation on Figure 28 of the Besemer application, to include the cavity 310, containers 2810 and 2820, and associated tubes.  The Federal Circuit agreed with Agilent’s interpretation that the term was defined by the claim itself.   The claim recites a closed chamber defined by “a first substrate and a second substrate having inner surfaces.”   The Court interprets the claim to require that the chamber be bound by a first substrate and second substrate, and thus incapable of ambiguously spanning a “system of enclosures.”  Rather, the Court looks to the claim language to construe the closed chamber as being explicitly defined by two surfaces.  Further, the Federal Circuit asserts that the Schembri specification is replete with references and support for its interpretation of “closed chamber.”  Finally, the Federal Circuit rejected the District Court’s interpretation as frustrating or even completely ignoring claim language requiring that “at least one of said inner surfaces is functionalized…”  Under a system definition, the Federal Circuit asserted that the Schembri specification provided no guidance as to which surface would be functionalized.  Thus, the Court rejected the District Court’s expansive definition of “closed chamber” and relied instead on the language of the claim and the Schembri specification to define the term.

The Federal Circuit also agreed with Agilent’s contention that the District Court erred in construing a “closed chamber… adapted to retain a quantity of fluid” as a chamber that is “capable of being sealed or set apart from its surroundings to retain a quantity of fluid.”  Citing Merck, the Federal Circuit held that “closed” should be given further meaning because a claim construction that gives meanings to all the terms of the claim is preferred to one that does not do so.  Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005).  The Court also looked to Mangosoft to reject the District Court’s construction that gave no meaning to a term (“closed”) that was not already implicit in the rest of the claim.  Mangosoft, Inc. v. Oracle Corp., 525 F.3d 1327, 1330-31 (Fed. Cir. 2008).  According to the Federal Circuit, closed was not the same thing as closable because equating the two terms was contrary to the plain language of the claim.

The District Court explicitly recognized that the ordinary meaning of the term “closed” in the context of a fluid retention chamber is “not open” or “sealed,” meaning that the chamber does not allow the fluid to escape.  However, the District Court compromised this ordinary meaning to fit its erroneous assumptions that the claims should be construed in light of the Besemer application and that a “closed chamber” can mean a “system of enclosures.”  The Schembri disclosure enables the ordinary meaning of the term to be utilized, and provides unambiguous and repeated support for such an interpretation.  Specifically, the Schembri disclosure defines both a chamber and a closed chamber, explaining that the chamber becomes a closed chamber with a substrate placed on top of its seal to close it. 

Thus, the Federal Circuit reversed the District Court’s construction because it was not grounded in the proper disclosure, and did not honor the customary meaning of the claim language to one of skill in the art.  The Federal Circuit averred that the proper meaning of a “closed chamber… adapted to retain a quantity of fluid” is “an enclosed cavity defined by the inner surfaces of the first and second substrates, from which there is no egress of fluid.”

Next, the Federal Circuit examined whether the grant of summary judgment that the Besemer application had adequate possession of the claimed invention at the time of invention was proper.  First, the Court cited In re Wright to note that the written description doctrine prohibits new matter from entering into claim amendments, especially during the continuation process.  In re Wright, 866 F.2d 422, 424 (Fed. Cir. 1989).  The court further observed that the written description requirement is a question of fact that requires that the specification must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the [claimed] invention.” Conservolite, Inc. v. Widmayer, 21 F.3d 1098, 110 (Fed. Cir. 1994); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).  Finally, the court declared that patent applications do not enjoy a statutory presumption of validity.  Rather, Agilent’s burden of proving a lack of written description in the Besemer application is merely a preponderance of the evidence.  Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1365 (Fed. Cir. 2004).

Before addressing the substantive merits of the grant of summary judgment, the Federal Circuit agreed with Agilent’s contention that the District Court erred by adopting an incorrect standard of review for new evidence that had not been before the Board.  Under 35 U.S.C. 146, a party dissatisfied with the Board’s decision may initiate a civil action in a U.S. District Court to bring forth “further testimony.”  Under this section, if the parties present new evidence to the District Court that is in conflict with the record before the Board, the District Court must make de novo factual findings regarding the new evidence. 

Agilent initiated an action under Section 146 in response to the Board’s finding that it had not advanced any “meaningful evidence” to show that one of ordinary skill in the art would not have understood Besemer’s application to inherently disclose using bubbles to mix fluid in a closed chamber, as required by the contested claims.  The Board specifically told Agilent that, for example, an expert declaration that one of ordinary skill in the art would not have had the requisite knowledge or skills to conclude from the Besemer application that the inventor was in possession of the invention would have been useful.  Agilent submitted deposition testimony from Affymetrix’s expert to remedy the evidentiary deficiency.  Specifically, Affymetrix’s expert explained that bubbles were not inherently present in the “vortexer” embodiment of Figure 29 of Besemer’s disclosure.  Further, in the embodiments of Figures 28 and 30, the chamber was not closed.  The parties had already agreed that Figures 28-30 of Besemer’s application were the only embodiments relating to the bubble mixing of the contested claims. 

The District court dismissed this evidence, concluding that Agilent had not presented any new evidence concerning the written description issue, and deferentially reviewed the Board’s decision for substantial evidence.  The Federal Circuit asserted that this deferential review was legal error because Agilent had submitted new evidence that specifically pertained to filling evidentiary gaps observed by the Board.  The Court emphasized that Section 146 allowed a litigant to shore up evidentiary gaps that may have been evident by the end of the inter partes interference procedure.  Here, the Court recognized that Agilent was notified of such evidentiary gaps and took measures to fill them.  The Federal Circuit asserted that evidence submitted by Agilent in the Section 146 action should have been considered by the District Court.  Thus, the Federal Circuit examined Agilent’s evidence without deference to the Board’s finding.

As mentioned above, the record showed, and the parties seemed to agree, that the only embodiments depicting bubble mixing in the Besemer application were those illustrated by Figures 28-30, i.e. the “circulator” and “vortexer” embodiments.  Agilent contended that these embodiments of the Besemer application failed to provide written description support for the claims at issue.  First, the “circulator” embodiments (as illustrated in Figures 28 and 30 of the Besemer application) failed to describe a method that takes place in a closed chamber.  Second, the “vortexer” embodiment (as illustrated in Figure 29 of the Besemer application) failed to describe bubble mixing at all. 

Given the Federal Circuit’s interpretation of a “closed chamber… adapted to retain a quantity of fluid,” the Court initially looked to the Besemer specification to disclose such an enclosed cavity from which there is no egress of fluid.  Upon close examination of the Besemer disclosure, the Court found that the “circulator” embodiments of Figures 28 and 30 did not disclose a closed chamber that would prevent the escape of fluid.  Rather, those embodiments required the circulation of fluid in and out of the cavity to facilitate mixing.  Affymetrix’s own expert affirmed that requirement in his deposition to the District Court.  Thus, the “circulator” embodiment of Figures 28 and 30 provided no written description support for the bubble mixing of the contested claims. 

The Federal Circuit then turned to the “vortexer” embodiment of Figure 29, in which it found a closed chamber.  The Court observed that the “vortexer” embodiment allowed the introduction of fluid into a closed reaction chamber from which the fluid did not egress.  To fully satisfy the written description requirement, this embodiment must then also describe “providing a bubble in the fluid” and “moving a bubble within the fluid to result in mixing,” as required by the contested claims.  However, both mentions of bubbles in the Besemer disclosure relied on by Affymetrix were tied to the “circulator” embodiments, where the bubbles are created by forcing fluid in and out of the chamber.  The Court found that this creation of bubbles was inconsistent with the requirement of a “closed chamber.” 

The Court further asserted that Affymetrix’s argument that the “vortexer” embodiment inherently produces bubbles was contradicted by Affymetrix’s own expert testimony that bubbles were not necessary generated in the fluid in the system as depicted by Figure 29 (the “vortexer” embodiment).  The Federal Circuit cited In re Oelrich to note that inherency requires that one of ordinary skill in the art would recognize that a reference unavoidably teaches the property in question.  In re Oelrich, 666 F.2d 578, 581 (C.C.P.A 1981).  The mere fact that a certain thing may result from a given set of circumstances would not establish inherency. Hitzeman v. Rutter, 243 F.3d 1345, 1355 (Fed. Cir. 2001).  Given Affymetrix’s expert testimony, the Court declared that Affymetrix’s argument that the “vortexer” chamber might include an unmentioned void that might result in bubble creation was insufficient to establish inherency.

Thus, the Federal Circuit failed to find any embodiments in the Besemer application that disclosed bubble mixing in a closed chamber and concluded that the District Court erred in its grant of summary judgment in Affymetrix’s favor.  The Federal Circuit stated that Affymetrix copied Agilent’s claims into its continuation application despite having failed to disclose the claimed invention.  Therefore, the Court reversed the District Court and granted Agilent’s motion for summary judgment regarding the written description issue.

The Federal Circuit reversed the District Court’s claim construction because it was not grounded in the proper disclosure, and did not honor the customary meaning of the claim language to one of skill in the art.  The Federal Circuit stated that the originating disclosure should be controlling for claim construction when determining if the host application has adequately supported the subject matter claimed by both parties.  Further, the ordinary meaning of the claim language should be recognized, if supported by the originating disclosure.  The Federal Circuit also reversed the grant of summary judgment regarding Affymetrix’s possession of the claimed invention at the time of invention.  Here, the Federal Circuit reversed the District Court and considered new evidence submitted by Agilent to the District Court.  The Federal Circuit stressed that litigants are given the opportunity through 35 U.S.C. 146 to satisfy evidentiary gaps brought to light at the Board and stated that evidence submitted through a 146 action should be taken into account.  In light of that new evidence, and upon close examination of the Besemer disclosure, the Federal Circuit found no evidence that the disclosure supported the invention as claimed.