Did the CAFC Miss the Real “Written Description” Issue in Crown Packaging?

By Eric Guttag
April 13, 2011

After the Federal Circuit ruled in Ariad Pharmaceuticals v. Eli Lilly there is a separate and distinct “written description” requirement in the first paragraph of 35 U.S.C. § 112, some may have thought that all might be quiet on the “written description” front.  But the recent case of Crown Packaging Technology, Inc. v. Ball Metal Beverage Container Corp., suggests that all may no longer be quiet on that front.  In fact, I’ll express the “heretical” view that the Federal Circuit missed the real “written description” issue in this case, namely what is (or should be) the impact of the “characterised in that” (or as we Americans would phrase it “characterized in that”) language used in the common patent specification of the two patents involved in this case.

In Crown Packaging, U.S. Pat No. 6,935,826 (the ‘826 patent) and U.S. Pat. No. 6,848,875 (the ‘875 patent) which shared a common patent specification were asserted to be infringed by Ball Metal Beverage Container Corporation (“Ball Metal”).  The ‘826 patent covered a metal can end to be joined to a can body in making, for example, beverage cans.  The ‘875 patent covered the corresponding method for joining the can end to the can body.  Of particular relevance are FIG. 2 (illustrating the prior art), as well as FIGS. 4 and 5 (illustrating the claimed invention), of the ‘826 patent shown below:

The common patent specification “identifies and discusses two ways to save metal when seaming can bodies and can ends.”  One is by increasing the slope of the chuck wall of the can end (also referred to as the “can end wall”) to between 30o and 60o (see, for example, angle Co in FIG. 4 above), versus only about 12o in the prior art can end wall (see angle C in FIG. 2 above).  The other is by limiting the width of the anti-peaking reinforcing bead (see bead D in FIG. 2 above) to less than 1.5 mm (see bead 25 in FIG. 5 above, and especially the distance between each set of vertical lines for d2 and d1 in FIG. 4 above which represents the width of bead 25).

As can be seen in FIG. 5 above, chuck 30 (having chuck body 31 and drive surface 32) engages drive surface 32 outside (i.e., beyond vertical lines d2 of bead 25) of the reinforcing bead (the “outside” embodiment), but not inside (i.e., within vertical lines d1 of bead 25, the “inside” embodiment) of the reinforcing bead.  In fact, none of the FIGS. in the ‘826 patent illustrate this “inside” embodiment.

This of lack of an illustration of the “inside” embodiment became the basis for the district court invalidating (on summary judgment) both the ‘826 patent, as well as the ‘875 patent, for failing to satisfy the “written description” requirement.  (The ‘826 and ’875 patents were also invalidated for anticipation.)  A majority of the Federal Circuit panel (District Court Judge Whyte, sitting by designation, and Judge Newman) reversed, holding that the “common [patent] specification conveys to one of ordinary skill in the art that the patentee was in possession of the asserted claims” (e.g., Claim 14 of the ‘826 patent and Claims 50 and 52 of the ‘875 patent).

The essential contention on “written description” between the parties came down to whether the common patent specification taught two separate solutions for improving metal usage (the patentee’s contention) or two interrelated solutions (Ball Metal’s contention).  The majority opinion accepted the patentee’s contention that “nothing in the specification requires employment of both [solutions] in all instances.”  The majority opinion also disagreed with Ball Metal’s contention that the holding in the prior 2009 Revolution Eyewear, Inc. v. Aspex Eyewear, Inc. case was inapplicable when the “prior art problems are related to one another.”

Judge Dyk dissented, arguing (correctly in my opinion) that the “specification does not teach combining the sloped can end wall together with the wider, prior art bead and driving the chuck into the bead instead of the sloped can end wall.”  As Judge viewed it, that “combination is a new and distinct invention, and our written description jurisprudence requires that it be described in the specification.”  Even so, I would have agreed with majority opinion but for one significant (and unrecognized) “fly in the ointment” that I’ll now address.

In my view, both the majority opinion, as well as Judge Dyk’s dissent, miss the real “written description” problem in Crown Packaging which has nothing to do with whether the common patent specification illustrates both solutions to the prior art problem.  Instead, it relates to the follow description (see column 1, line 62 to column 2, line 5 of the ‘826 patent) at the end of the sentence stating how the claimed invention solved the problem of using less metal in the can end:  “characterized [or “characterised” depending on which version of the ‘826 patent you use] in that, the chuck wall is inclined to an axis perpendicular to the exterior of the central panel at an angle between 30o and 60o and the concave [i.e., the reinforcing] bead narrower than 1.5 mm (0.060”).”

For those familiar with European (EPO) style claiming, the “characterized in that” language is the common way to separate out that which is “new” (and thus novel) from that which is “old” (and thus prior art).  As also those of us who practice on this side of the Atlantic Ocean know (and fear), using such “characterized in that” language in any patent claim (or even the patent specification) is now extremely dangerous as at least being an admission that the “old” is truly prior art, and only that which is after the “characterized in that” language is, in fact, the “new” (novel) stuff.  (Given that the ‘826 and ‘875 patents claim priority from a British patent application, it’s also not that surprising that this European style language appears in the common patent specification.)

By implication, this “characterized in that” language strongly suggests that claimed invention, to achieve using less metal, requires both increasing the slope of the chuck wall angle, as well as using the narrower width reinforcing bead.  (This “narrower width reinforcing bead” language appears not in Claim 14, but in the dependent Claim 5 of the ‘826 patent.)  That no one, and I mean no one, including the parties in this suit, discusses (or even recognizes) the implications of this “characterized in that” language on the “written description” requirement boggles my mind.  That failure becomes even more bizarre when you consider the following statement from the majority opinion:  “Nowhere does the specification teach that metal savings can only be achieved by increasing the chuck wall angle along with narrowing the reinforcing bead.”

With all due respect, this statement from majority opinion is simply not correct if you consider the “characterized in that” language in the common patent specification, and especially what it implies as to the need for the claimed invention to have both features (increasing the slope of the chuck wall angle, as well as the narrowing the width of the reinforcing bead) to achieve reduced metal usage.  Also, the majority opinion’s reference after this statement to what is shown in the Tables 1-6 doesn’t help make this statement correct.  If the “characterized in that’ language means what it appears to say (and says what it appears to mean), what the inventors of the ‘826 (as well as the ‘875) patents contemplated their invention to be (and what they were “in possession of” for “written description” purposes) requires both these features to be present in the claimed invention.

Again, I would have agreed with the majority opinion in Crown Packaging that the “written description” requirement had been satisfied if this “characterized in that” language wasn’t in the common patent specification.  It might also have helped if the description of these two features in the claimed invention had been phrased clearly in the alternative (“or”) somewhere else in the common patent specification.  But what really troubles me is that no one, be it the majority opinion, the dissenting opinion, or even the parties, addresses what this “characterized in that” language means in Crown Packaging, and especially what impact it should have in determining whether (or not) the “written description” requirement was satisfied.  (P.S.:  one lesson to be learned from Crown Packaging is to never, I repeat, never use the European style “characterized in that” language anywhere in a U.S. patent specification.)

The Author

Eric Guttag

Eric Guttag  
Mr. Guttag has over 38 years of corporate and private intellectual property law experience on patent, trademark, copyright, trade secret and unfair competition matters, computer and Internet law, including patent application drafting, prosecution, and patentability studies; infringement and validity studies; international patent prosecution; patent and know-how licensing; consulting, confidentiality, clinical study and research agreements; trademark searches and opinions; trademark registration and prosecution; trademark freedom-to-use studies and trademark litigation and dispute resolution.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 5 Comments comments.

  1. Paul F. Morgan April 14, 2011 10:46 am

    On the same subject, in spite of the numerous times in recent years that the Fed. Cir. has punished patent application drafters for what they wrote under a “Summary of the Invention” subtitle [which is not mandatory, and dangerous], or in a “the invention comprises …..” statement that contains language not in all of the final claims, some of them still keep on obliviously doing it.

  2. Karen G. Hazzah April 15, 2011 2:20 pm

    >But what really troubles me is that no one, be it the majority opinion, the dissenting opinion, or even the parties,
    >addresses what this “characterized in that” language means in Crown Packaging,

    If the parties didn’t raise the issue, then I don’t find fault with the court for not addressing it.

    I didn’t read the briefs to the Fed. Cir., but I did read the district court opinion. And I don’t recall anything in the lower court opinion about “characterized.” Sounds like the accused infringer may have missed a great argument for invalidation.

    >never use the European style “characterized in that” language anywhere in a U.S. patent specification.

    Absolutely.

    Gene, what do you think about this issue? Say your US app claims priority to a European app. And the spec and/or claims use “characterized”. Can you amend spec/claims in the US to reword and remove this damaging word? Or does that raise a new matter issue?

  3. Anonymous April 16, 2011 5:18 pm

    With all due respect, I think that your post misses the forest for the trees. The majority opinion points to specific locations where the specification shows that the width of the reinforcing bead was a separate and distinct solution to the metal savings problem and wasn’t necessarily linked to the increased chuck wall angle. The specification strongly suggests that the modified chuck was only necessary where one elects to narrow the reinforcing bead. Why should the patentee be required to insert this limitation into claims that did not cover the narrow reinforcing bead?

    It may very well be that what the inventors considered to be “new” included both aspects of the invention (a narrow reinforcing bead and an increased chuck wall angle). So what? The statement you put so much focus on does not necessarily mean that both modifications were required to be used together in every instance. Yes, the “and” suggest that both improvements are used together. Yet the majority discusses how the specification shows otherwise. The preferred embodiment likely employs both improvements, but since when have patents been limited to preferred embodiments alone? Moreover, the majority points out that the accused infringer did not argue lack of enablement where one employs only the increased slope of the can end wall and not the narrow reinforcing bead. This strongly suggests that it is possible to achieve metal savings through each improvement alone, just as the originally filed claims suggest.

    At bottom, this is certainly an argument that the accused infringer should have raised. The specification should could have been much, much clearer. But at the end of the day, the “characterized” statement is not as compelling as you suggest. I don’t think that the majority missed the real issue.

  4. EG April 18, 2011 1:49 pm

    ” I think that your post misses the forest for the trees.”

    Anonymous,

    Not really. The complaint that some patent applicants “change” their definiton original of the invention after they see what others have done is one I take seriously. This complaint is leveled quite appropriately at those, like the late Lemelson, who game the system by trying to keep the definition of what was originally viewed as the invention vague. At some point, the patent applicant has to take a position as to what the “invention” is, or else the “written description” requirement in 35 USC 112, paragraph 1, becomes meaningless.

    I know you, like the majority, want to focus on what the Tables might suggest was invention (each feature separately), but that’s not what the “characterized in that” language says. Again, as stated in my post, the reference by the majority to what was shown in the Tables is an afterthought as to what the applicant might have defined the invention to be. If the “characterized in that” is to be other than meaningless, it tells me that both features were viewed as necessary by the applicant to achieve the benefit; that’s how this EPO-style format works. Put differently, if those two featuers had appeared after transitional “comprising” and in the conjunctive, without any other suggestion in the specification that each feature could be used separately, you would normally draw a “new matter”/”written description” rejection.

    I know reasonable minds can and might differ as to what I see here. (And believe me, I’m usually considered “pro-patent” by most, although I’m really “pro-patent system.”) It’s just how I see it based on my experience as to what the EPO-style “charactized in that” means.. But thanks for your perspective.

  5. Anonymous April 18, 2011 3:09 pm

    Thanks for the follow up. I do think you raise a good point (even if I disagree!) that the parties should have addressed. Looking over the briefs, it appears that neither party focused on this “characterized by” language. However, the opinion does mention the “and” connector between the two improvements.

    I agree that the “characterized in that” language shows that that both of these features were new. But does it necessarily mean that both must be used together at all times? I don’t think it’s clear. That interpretation rests mostly on the meaning of “and,” not the “characterized in that” language. If the statement is only referring to what the inventor considers to be “new,” then I don’t think it’s an admission that both improvements have to be used together. The statement is ambiguous in that respect.

    Not sure how this works in the EPO, but we are talking about originally filed claims here. Does the fact that the originally filed claims separated the two improvements count for something? The originally filed claims are part of the written description and clearly show that the inventors contemplated two separate and distinct improvements. Given the tables and the statements regarding the scuffing and damage problems related only to the narrow reinforcing bead, I think there’s a solid argument that the patent supports the originally filed claims.

    For me, I think it is telling that Ball never argued that one couldn’t achieve metal savings by increasing the slope of the chuck wall alone. This strongly suggests that the two improvements are in fact independent. I wonder if lack of enablement would have been the better argument here.

    Thanks for the great post and the great discussion.