Cisco Sys. v. Cirrex Sys., LLC, (Fed. Cir. May 10, 2017) (Before Prost, C.J., Wallach, and Chen, J.) (Opinion for the court, Chen, J.)
Cisco challenged Cirrex’s patent via inter partes reexamination, asserting a lack of written description. The Board affirmed the Examiner’s findings, that the patent, as amended, contained both patentable and unpatentable claims. On appeal, the Federal Circuit affirmed in part and reversed in part, holding that all of the claims are unpatentable for lack of written description.
The Cirrex patent is directed to fiber optic communication signals and describes an assembly used to separate individual wavelengths, splitting an optical beam into multiple channels. This maximizes efficiency, as it allows information to be sent simultaneously rather than in series. The patent also describes using amplification or attenuation to increase or decrease the intensity of an individual wavelength of light, which can result in “equalization” of the different wavelengths and improve transmission quality.
During reexamination, the Examiner rejected the claims directed to the separation of individual wavelengths for lack of written description, but found some of the equalization and attenuation claims patentable. The Board affirmed these findings.
The Federal Circuit found that the Board erred in its claim construction, because the patent specification only disclosed support for equalizing within the assembly itself, not outside of the assembly as Cirrex argued. Further, the specification did not provide support for the attenuation claims as Cirrex argued them, i.e., that the attenuation material within the assembly would result in discrete attenuation (versus collective attenuation).
For the same reasons, the Court found that the Board’s affirmation of patentability was error. The Board had found that the assembly was capable of equalization and discrete attenuation, despite the fact that all of the wavelengths that actually entered the assembly were attenuated (collective attenuation), because a wavelength remained outside of the assembly and was therefore not attenuated. The Court set up its analysis by pointing to its precedent: “while it is legitimate to amend claims or add claims to a patent application purposefully to encompass devices or processes of others, there must be support for such amendments or additions in the originally filed application.” Moving to the merits the Court noted that under its claim construction, “the claimed functionality of equalization and discrete attenuation must occur inside [the assembly].” Thus, the patent failed to satisfy the “quid pro quo” that the written description requirement necessitates, because the specification nowhere described how all of the claimed steps would take place within the assembly.
Patent Prosecutors must find sufficient support in the specification for amended or added claims. When amended claims, under a proper construction, require features missing from the Specification, the claims are unsupported and not patentable as written.