Scope of Enablement Invalidates Genus Claim in Predictable Art

In Lizardtech, Inc., et al. v. Earth Resource Mapping, Inc. (Fed. Cir. October 4, 2005) the court used scope of enablement to invalidate a genus claim in a predictable art.

The technology at issue in this case involved discrete wavelet transforms (“DWT’s”) for compressing image data. Prior art tile-based DWT processes would create wavelet transform boundary conditions in the interior of the image data which could potentially result in compression artifacts. U.S. Patent No. 5,710,835 (right) disclosed “seamless” wavelet-based compression.

However, the term “seamless” did not appear in genus claim 21 which was otherwise, identical to valid species claim 1, except that it did also not contain the “maintaining updated sums” and “periodically compressing said sums” limitations. Because the lower court felt that the specification did not describe a nonseamless DWT algorithm, it held that claim 21 and its dependent claims were unsupported by the written description and thus were invalid.

According to the appellate court,

LizardTech is correct in arguing that a erson of skill in the art, upon reading the entire patent and prosecution history, would understand the DWT-based compression processes recited in claim 21 to create a seamless DWT of the image. As the patent makes clear, prior art tile-based DWT processes would create “wavelet transform boundary conditions in the interior of the image data which could potentially result in compression artifacts,” and “implementation of a local multiscale retrieval routine is complicated by these interior boundaries.” ’835 patent, col. 2, ll. 4-9. Therefore, “in accordance with the present invention, a method is provided for the seamless wavelet-based compression of very large contiguous images and for accessing arbitrary
locations in the image at a variety of resolutions.” Id., col. 2, ll. 9-12. Throughout the
patent, the wavelet-based compression process is referred to as seamless. See, e.g., id., col. 2, ll. 51-52; id., col. 2, ll. 61-62. While it is true that not every advantage of the invention must appear in every claim, see Phillips, 415 F.3d at 1327, it would be peculiar for the claims to cover prior art that suffers from precisely the same problems that the specification focuses on solving.

The prosecution history also makes clear that the DWT-based compression process recited in claim 21 creates a seamless DWT. In arguing that claims 1, 14, and 21 were not obvious, the prosecuting attorney stated that the applicant “is compressing the tile data and then processing the tile data in a selected sequence so that the resulting stored DWT coefficients represent the entire image, not tile images, and without any artifacts at tile boundaries.” In other words, the prosecuting attorney was saying that the independent claims recite algorithms that result in a seamless DWT.

Furthermore, the prosecuting attorney argued that the claims that depended on claim 21 also contain a “method for combining the DWT tile data to produce a seamless data array.” In fact, the prosecuting attorney stated that “the invention claimed by applicant as a whole” is to “provide a seamless stored array of compressed DWT
coefficients.” Those arguments were not lost on the examiner. The examiner noted
in the reasons for allowance that claims 1, 13, and 21 “form a seamless discrete
wavelet transformation of the image.” Thus, a person of skill in the art would recognize the DWT-based compression processes recited in claim 21 as creating a seamless DWT of the image.

The fact that claim 21 is directed to creating a seamless DWT does not mean that the claim is valid, however. The problem is that the specification provides only one method for creating a seamless DWT, which is to “maintain updated sums” of DWT coefficients. That is the procedure recited by claim 1. Yet claim 21 is broader than claim 1 because it lacks the “maintain updated sums” limitation. Thus, a person of ordinary skill in the art would understand that claim 21 is directed to a seamless DWT.

But because there are no limitations in claim 21 as to how the seamless DWT is accomplished, claim 21 refers to taking a seamless DWT generically. It is also clear that claim 21 cannot be directed to creating a seamless DWT only in the way that claim 1 recites, i.e., by maintaining updated sums of DWT coefficients. To do so would impermissibly read a limitation into claim 21 and would make it essentially redundant of claim 1.

The trouble with allowing claim 21 to cover all ways of performing DWT-based
compression processes that lead to a seamless DWT is that there is no support
for such a broad claim in the specification. The specification provides only a
single way of creating a seamless DWT, which is by maintaining updated sums of
DWT coefficients. There is no evidence that the specification contemplates a
more generic way of creating a seamless array of DWT coefficients.

Paragraph one of section 112 of the Patent Act requires a patent specification to set forth the “best mode” contemplated by the inventor “of carrying out his invention,” and to contain “a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art . . . to make and use the same.” 35 U.S.C. § 112, para. 1. That obligation, which forms an essential part of the quid pro quo of the patent bargain,
“requires the patentee . . . to describe [the invention] in such terms that any person skilled in the art to which it appertains may construct and use it after the expiration of the patent.” Permutit Co. v. Graver Corp., 284 U.S. 52, 60 (1931).

The “written description” clause of section 112 has been construed to mandate that the specification satisfy two closely related requirements. First, it must describe the manner and process of making and using the invention so as to enable a person of skill in the art to make and use the full scope of the invention without undue experimentation. See Tyler v. City of Boston, 74 U.S. 327, 330 (1868); AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003). Second, it must describe the invention sufficiently to convey to a person of skill in the art that the patentee had possession of the claimed invention at the time of the application, i.e., that the patentee invented what is claimed. See O’Reilly v. Morse, 56 U.S. (15 How.) 62, 112-13 (1853) (denying a claim for use of “electro-magnetism, however developed for marking or printing intelligible characters . . . at any distances” because others “may discover a mode of writing or printing at a distance . . . without using any part of the process or combination set forth in the plaintiff’s specification”); Moba, B.V. v. Diamond Automation,
Inc., 325 F.3d 1306, 1320-21 (Fed. Cir. 2003).

Those two requirements usually rise and fall together. That is, a recitation of how to make and use the invention across the full breadth of the claim is ordinarily sufficient to demonstrate that the inventor possesses the full scope of the invention, and vice versa. This case is no exception. Whether the flaw in the specification is regarded as a failure to demonstrate that the patentee possessed the full scope of the invention recited in claim 21 or a failure to enable the full breadth of that claim, the specification provides inadequate support for the claim under section 112, paragraph one.

Claim 21 is directed to creating a seamless array of DWT coefficients generically. The specification, however, is directed at describing a particular method for creating a seamless DWT, as opposed to using the disfavored, nonseamless prior art, and it teaches only that method of creating a seamless array. While the embodiment in LizardTech’s specification covers only one way of creating a seamless DWT, claim 21 is not invalid simply for that reason. A claim will not be invalidated on section 112 grounds simply because the embodiments of the specification do not contain examples explicitly covering the full scope of the claim language. See Union Oil Co. v. Atl. Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000). That is because the patent specification is written for a person of skill in the art, and such a person comes to the patent with the knowledge of what has come before. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).

Placed in that context, it is unnecessary to spell out every detail of the invention in
the specification; only enough must be included to convince a person of skill in the art that the inventor possessed the invention and to enable such a person to make and use the invention without undue experimentation. In this case, however, LizardTech has failed to meet either requirement. After reading the patent, a person of skill in the art would not understand how to make a seamless DWT generically and would not understand LizardTech to have invented a method for making a seamless DWT, except by “maintaining updating sums of DWT coefficients.”

The inadequacy of the specification in this case is similar to the failing identified in Tronzo v. Biomet, Inc., 156 F.3d 1154 (Fed. Cir. 1998). In Tronzo, the patent at issue
pertained to an artificial hip socket that included cup implants adapted for insertion into a hip bone. Id. at 1156. In describing the shape of the cup implants, the specification distinguished prior art shapes as inferior and “tout[ed] the advantage of the conical shape.” Id. at 1159. However, the claims spoke of the shape of the cups generically. Id. On appeal, this court assessed whether the patent disclosure was sufficiently detailed to enable a person of skill in the art to recognize that Tronzo had invented what he claimed, i.e., cup implants with a generic shape. Id.; see also Turbocare Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111 (Fed. Cir. 2001). This court recognized that there was nothing in the patent’s specification “to suggest that shapes other than conical are necessarily a part of the disclosure.” Tronzo, 156 F.3d
at 1159. Therefore, the court held that the patent failed to provide the written description necessary to support the claims. Id. at 1160.

LizardTech responds that section 112 requires only that each individual step in a claimed process be described adequately. Because a process of creating a seamless DWT is described, LizardTech argues that claim 21 is not invalid. However, that approach is at odds with the analysis this court employed in Tronzo, and it would lead to sweeping, overbroad claims because it would entitle an inventor to a claim scope far greater than what a person of skill in the art would understand the inventor to possess or what a person of skill in the art would be enabled to make and use.

By analogy, suppose that an inventor created a particular fuel-efficient automobile
engine and described the engine in such detail in the specification that a person of ordinary skill in the art would be able to build the engine. Although the specification would meet the requirements of section 112 with respect to a claim directed to that particular engine, it would not necessarily support a broad claim to every possible type of fuel-efficient engine, no matter how different in structure or operation from the inventor’s engine. The single embodiment would support such a generic claim only if the specification would “reasonably convey to a person skilled in the art that [the inventor] had possession of the claimed subject matter at the time of filing,” Bilstad v.
Wakalopulos, 386 F.3d 1116, 1125 (Fed. Cir. 2004), and would “enable one of ordinary skill to practice ‘the full scope of the claimed invention,’” Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1253 (Fed. Cir. 2004), quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564 (Fed. Cir. 1996). To hold otherwise would violate the Supreme Court’s directive that “[i]t seems to us that nothing can be more just and fair, both to the patentee and the public, than that the former should understand, and correctly describe, just what he has invented, and for what he claims a patent.” Merrill v. Yeomans, 94 U.S. 568, 573-74 (1876); see also Phillips, 415 F.3d at 1321 (“The patent system is based on the proposition that the claims cover only the invented subject matter.”); AK Steel Corp., 344 F.3d at 1244 (“as part of the quid pro quo of the patent bargain, the applicant’s specification must enable one of ordinary skill in the art to practice the full scope of the claimed invention”). Thus, a patentee cannot always satisfy the requirements of section 112, in supporting expansive claim language, merely by clearly describing one embodiment of the thing claimed. For that reason, we hold that the description of one method for creating a seamless DWT does not entitle the inventor of the ’835 patent to claim any and all means for achieving that objective.

Finally, LizardTech argues that it is significant that claim 21 is part of the original disclosure and was not added at a later point. While it is true that an originally filed claim can provide the requisite written description to satisfy section 112, see Union Oil Co., 208 F.3d at 998 n.4, nothing in claim 21 or the specification constitutes an adequate and enabling description of all seamless DWTs. Therefore, we affirm the district court’s judgment that claims 21-25 and 27-28 are invalid for failure to satisfy the requirements of section 112. In light of that holding, it is unnecessary for us to consider the district court’s ruling that claim 21 is invalid for obviousness under 35 U.S.C. § 103.

I agree with Dennis Crouch at the Patently-O Blog when he writes that “I see this as a quite odd decision.” Not only did the court “not point to any element of claim 21 that was not sufficiently described,” but it also did not explain why “undue experimentation” would be required in order to apply the claimed process in a nonseamless environment. Of course, the whole problem might have been avoided if the attorney drafting the application had simply included the phrase "or nonseamless" somewhere in the application.