Cisco Successfully Invalidates Patent for Lack of Written Description

Federal Circuit

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.



The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Warning & Disclaimer: The pages, articles and comments on 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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently 4 Comments comments.

  1. Paul F. Morgan May 21, 2017 11:11 am

    It is important to note that this holding supporting the reexamination rejection of claims as unpatentable for lack of written description [a 112 rather than 102 or 103 rejection] was only possible because these were new claims added during the reexamination.

  2. Paul F. Morgan May 21, 2017 11:21 am

    Unless there is some very good reason why this presumably important inter partes reexamination filed in 1995 [No.95/001,175] took until 2007 [12 years] to get to this final decision, this is another flaming example of why the AIA had to take these inter partes post grant proceedings away from the examining corps by replacing them with IPRs with strict PTAB APJ-enforced deadlines.

  3. Edward Heller May 21, 2017 3:58 pm

    Paul, I’d check those dates.

    Also, there are a number of alternate remedies for slow reexaminations than replacing them with IPRs. A simple repeal would have done the trick. Tying the patent owner up in a reexamination for 12 years while term is running is not only unfair, it is borderline criminal. Had Congress known this would be “typical,” Congress would never have authorized reexaminations in the first place. The whole point was to “strengthen” patents for subsequent enforcement. How does that work with no term?

  4. Paul F. Morgan May 21, 2017 7:05 pm

    Good point Ned. The No. 95/001,175 is from the first sentence of this decision, but per the MPEP the reexamination statute was only amended on November 29, 1999 to provide the “inter partes” option, [But no more could be filed after 9/15/12.]