The Significant Federal Circuit Cases Interpreting Section 112*

THE SIGNIFICANT FEDERAL CIRCUIT CASES INTERPRETING SECTION 112* THOMAS L. IRVING** MICHAEL D. KAMINSKI*** WALTER Y. BOYD, JR.**** MARY S. HELMBERGER-JONES***** TABLE OF CONTENTS Introduction ................................................ 622 I. Legislative History of Section 112 ...................... 624 II. The Second Paragraph ................................. 627 A. The "Precision and Definiteness" Requirement .... 627 B. Defining What Applicant Regards As the Invention 636 III. The First Paragraph ................................... 637 A. The Enablement Requirement ..................... 637 1. Commensurate in scope ........................ 637 2. The "how-to-make" requirement ............... 646 a. Satisfying the requirement .................. 646 b. Availability of starting materials ............. 647 3. The "how-to-use" requirement ................. 648 4. Undue experimentation ........................ 651 5. Proving enablement ............................ 657 a. Claim interpretation in determining enablement ................................. 657 • The authors very gratefully acknowledge the assistance of NormaJ. Foster, secretary, in the preparation of this Article. This Article reflects the present considerations and views of the authors, which should not be attributed to Finnegan, Henderson, Farabow, Garrett & Dunner or to any of its past, present, or future clients. ** Partner, Finnegan, Henderson, Farabow, Garrett & Dunner; Adjunct Professor of Law, Washington College of Law, The American University; Member, Board of Directors, American Intellectual Property Law Association. *** Associate, Finnegan, Henderson, Farabow, Garrett & Dunner; Adjunct Professor of Law, Washington College of Law, The American University. **** Associate, Finnegan, Henderson, Farabow, Garrett & Dunner; former Law Clerk to The Honorable Marion T. Bennett, Senior Circuit Judge, United States Court of Appeals for the Federal Circuit. * **** Law Clerk, Finnegan, Henderson, Farabow, Garrett & Dunner;J.D. Candidate, Wash- ington College of Law, The American University. 621 622 THE AMERICAN UNIVERSITY LAW REVIEW [Vol. 41:621 b. Use of post-filing date evidence ............. 659 c. Use of expert declarations .................. 661 d. Use of extrinsic evidence ................... 663 e. Review of jury findings ..................... 666 f. Deposit of biological material ............... 667 6. Statements concerning enablement as a basis for a finding of unenforceability ................... 670 B. The "Written Description" Requirement ........... 671 1. In a reissue context ............................ 679 2. Essential material .............................. 683 3. Supplementing the written description ......... 685 a. Expert testimony ........................... 685 b. Inherency as providing a basis .............. 686 4. Absence of precise wording in the specification. 689 5. Obtaining the benefit of an earlier date under sections 119 or 120 ............................ 692 C. The "Best Mode" Requirement .................... 697 1. Concealment of the best mode as a basis for a finding of unenforceability ..................... 712 2. In the context of obtaining the benefit of an earlier date under section 120 .................. 715 3. Deposit of biological material to satisfy the best mode requirement ............................. 718 IV. The Sixth Paragraph ................................... 719 A. Introduction ...................................... 719 B. Interpretation of "Means-Plus-Function" Language for Determining Patentability ...................... 720 C. Claim Interpretation for Determining Infringement 723 V. The Third, Fourth, and Fifth Paragraphs ............... 747 Conclusion ................................................. 751 INTRODUCTION The modern U.S. patent system has three purposes: first, to encourage invention by offering potential rewards to the individual inventor;' second, to encourage industry to assume the risks of 1. See U.S. CONST. art. I, § 9, cl. 8 (granting federal authority to establish patent laws). The foundation for the modern federal patent system begins with the Constitution, which provides that Congress shall have power "to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." Id. This provision reflects the accepted view that individuals have a right to the fruits of their inventive intellectual accomplishment. See STAFF OF SENATE CONINI. ON THE JUDICIARY, 85TH CONG., IST SESS., PROPOSALS FOR IMPROVING THE PATENT SYSTEM I (Comm. Print 1957) (describing system of rewards to inventor and society inherent in patent system). The American government's founders recognized that "[t]he copyright of authors 1992] INTERPRETING SECTION 112 623 financing research, developing products, and introducing new products to the marketplace; 2 and third, to discourage an atmosphere in which industrial design and technological development are clouded in secrecy, and scientific progress is hidden from the public.3 This third purpose underscores the patent system's quid pro quo nature, in which the patent is a social contract or franchise. 4 Disclo- sure by the inventor, then, is the consideration in the social contract between the inventor and the government.5 35 U.S.C. § 112 (section 112) sets forth the requirements of disclosure. If the disclosure is insufficient to enable a skilled person to make and use the claimed invention, then there is a failure of consideration, and the patent is invalid.6 Since its creation in 1982, the United States Court of Appeals for the Federal Circuit has addressed various issues concerning section 112, ostensibly to satisfy its mandate to bring uniformity to the patent law. 7 This Article highlights and discusses the significant Fed- eral Circuit opinions interpreting section 112 since the court's inception in 1982. This Article is organized according to subject area, with the more significant opinions discussed in greater detail. This Article is not intended to be a primer on the law of section 112; has been solemnly adjudged, in Great Britain, to be a right of common law. The right to useful inventions seems with equal reason to belong to the inventors. The public good fully coincides in both cases with the claims of the individuals." SENATE COMM. ON THE JUDICIARY, 85TH CONG., IST SESS., THE PATENT SYSTEM AND THE MODERN ECONOMY 1 n.4 (Comm. Print 1957) (citing THE FEDERALIST No. 43 at 279 (James Madison)). 2. See SENATE COMM. ON THEJUDICIARY, 85TH CONG., IST SESS., THE PATENT SYSTEM AND THE MODERN ECONOMY 1-2 (Comm. Print 1957) (noting desirability of industry's promotion of inventions). 3. See id. (discussing importance of patent system to public). 4. See Seymour v. Osborn, 78 U.S. (I1 Wall.) 516, 533-34 (1870) (describing patents as "public franchises"). In Seymour, the Supreme Court suggested a quid pro quo relationship between the patentee and society. Id. The benefit to the public is found in the patent system's "tend[ancy] to promote the progress of science and the useful arts." Id. at 533. The benefit to the individual patentee is found in the system's "compensation to the inventor for their labor, toil, and expense in making the inventions." Id. 5. See Century Elec. Co. v. Westinghouse Elec. & Mfg. Co., 191 F. 350, 354 (8th Cir. 1911) (describing contractual nature of patent process). In Century Electric, the court described a patent as "a contract made by the acceptance by the government of the offer which the patentee by his application makes to disclose his invention, in consideration that the United States will secure to him the exclusive use and sale of it for seventeen years." Id. (emphasis added). 6. 35 U.S.C. § 112 (1988). 7. See Federal Courts Improvement Act, Pub. L. No. 97-164, 96 Stat. 25 (codified as amended at 20 U.S.C. § 1 (1982)) (creating federal appellate court with exclusive subject mat- ter jurisdiction for patent cases); S. REP. No. 275, 97th Cong., 2d Sess. 5, reprintedin 1982 U.S.C.C.A.N. 11, 15 (stating that Federal Circuit will provide needed uniformity at appellate level). 624 THE AMERICAN UNIVERSITY LAW REVIEW [Vol. 41:621 rather, it is a presentation of opinions illustrating the Federal Cir- cuit's interpretation of section 112.8 I. LEGISLATIVE HISTORY OF SECTION 112 The Federal Circuit's interpretation of section 112 is necessarily bound by the legislative history of the statute. A brief overview of the origin of section 112 and its predecessor provisions offers a useful starting point. The quid pro quo nature of patent disclosure is at the very foundation of patent law, as seen in the original Patent Act of 1790. 9 Disclosure, including precision in particularly pointing out what activities fall within the exclusionary right of the patent, was required not only to teach the methodology of the invention, but to delineate the invention so the public would know what activities infringed the patent. 10 These two themes evolved into what are today section 112's paragraphs (1) and (2). The 1790 Patent Act also made inadequate disclosure a defense in patent infringement suits. Defendants could argue that the specification "does not contain the whole truth concerning his invention," or "contains more than is necessary to produce that effect described" if either "appear[ed] to have been intended to mislead, or shall actually mislead the public, so as the effect described cannot be produced by the means specified."" In 1793,

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