spinalIn October, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Synthes USA, LLC and Depuy Synthes Products, LLC. v. Spinal Kinetics, Inc.,_F.3d _ (Fed. Cir. 2013). Synthes USA and Depuy Synthes Products (Synthes), the plaintiffs-appellants, appealed from a jury verdict of non-infringement of U.S. Patent No. 7,429,270 (270 patent) and invalidity for lack of a written description while Spinal Kinetics (SK) cross-appealed the district court’s denial of its motion for attorneys’ fees. In its decision, the Federal Circuit affirmed both the verdict of invalidity and the court’s denial of attorneys’ fees.

In particular, Synthes had filed a complaint in the U.S. District Court for the Northern District of California alleging that SK’s M6-C and M6-1 discs infringed claims 29-31 of the 270 patent, which describes an inervertebral implant “designed to replace a diseased or degenerated disc located between adjacent vertebrae of the human spine.” The parties disputed certain terms in claim 29 of the patent, including the correct construction of the phrase “the third plate including a plurality of openings,” which was added by amendment five years after the original application was filed. SK argued that the plurality of openings was limited to grooves on the circumference of the cover plates. Synthes, however, construed the claim as “ a third plate including two or more openings,” not limited to grooves. After a pre-trial hearing, the court agreed with Synthes’ broad interpretation, construing the phrase as the “third plate including two or more openings to allow the fiber system to be joined or anchored to that plate.”

At trial, the court asked the jury to determine whether the patent’s written description, which discloses a plurality of grooves, reasonably conveyed  to those skilled in the art that the inventor had possession of an intervertebral implant that could utilize any type of opening located anywhere on the cover plates. The jury concluded that SK’s devices did not infringe the asserted claims of the 270 patent and that SK had proven by clear and convincing evidence that claims 29-31 were invalid for lack of written description. Later, the court affirmed the jury’s finding that the plurality of openings limitation was invalid for lack of written description support.  It also denied SK’s motion for attorneys’ fees.

On appeal, the Federal Circuit upheld the district court’s decision, finding that expert and fact testimony provided substantial evidence for the jury to concluded that the plurality of openings limitation was invalid for lacking an adequate written description, as required by 35 U.S.C. §112.  Particularly, to satisfy the requirements of 35 U.S.C.  §112, one of ordinary skill in the art must be able to recognize that the patentee invented what is claimed as of the filing date. As the Federal Circuit explains, according to Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004), an applicant is allowed to broaden claims during prosecution to capture a competitor’s products, but the disclosure must support the broadened claims.

In this case, drawing all inferences in favor of the jury, the Federal Circuit found that the jury was entitled to concluded that the plurality of openings limitation was invalid because the patent’s written description never disclosed anything broader than using grooves to anchor the fiber system to the cover plates. Whether the written description requirement is met depends on the “nature and scope” of the claims as well as the “complexity and predictability” of the relevant technology. See Ariad Pharm, Inc. v. Eli Lilly & Co., 598 F. 3d 1136 (Fed. Cir. 2010). While disclosure of a species may be sufficient support for a claimed genus including that species, predictability is a factual issue to be decided on a case-by-case basis. Based on the evidence presented here, the disclosure of grooves was not adequate to demonstrate possession of the entire genus of possible openings located anywhere on the plates. The court thereby affirmed the district court’s decision and found the remaining issues moot.


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