“The Federal Circuit vacated the Board’s decision and ordered the Board, on remand, to address predictability and criticality of the claim term in question in order to determine whether the written description requirement has been satisfied.”
Global IP Holdings, LLC, the owner of U.S. Patent No. 8,690,233 (“the ’233 patent”), recently achieved a victory with the United States Court of Appeals for the Federal Circuit vacating a decision of the Patent Trial and Appeals Board (“Board”) and remanding the case for further proceedings. See In re Glob. IP Holdings LLC, No. 2018-1426, 2019 U.S. App. LEXIS 20049 (Fed. Cir. July 5, 2019) (Before Moore, Reyna, and Stoll, Circuit Judges) (Opinion for the Court, Stoll, Circuit Judge).
The ‘233 patent claims carpeted automotive vehicle load floors having sandwich-type composite panels with cellular cores. In one embodiment, the load floor refers to the back-side of a car seat, which operates as the trunk floor when folded down. The specification discloses that hinged panel is typically manufactured from a stack of material including “first and second reinforced thermoplastic skins 16 and 18, respectively, a thermoplastic cellular core 20 disposed between the skins 16 and 18 and a top layer of a substantially continuous covering layer generally indicated at 21.” The ’233 patent at col. 4 ll. 35–42.
This present ex parte dispute arose when Global filed a reissue application, seeking to broaden its claims in the ’233 patent by replacing the term “thermoplastic” with “plastic” in independent claims 1, 14, and 17. The examiner rejected certain reissue claims as failing to comply with the written description. Global argued on appeal to the Board that because of the well-established predictability of using plastics and its lack of criticality to the claimed invention, the written description requirement was satisfied. Ultimately, the Board agreed with the examiner on appeal, holding that Global improperly attempted to broaden its claims by replacing “thermoplastic” with “plastic” in its claims because “plastic” was not disclosed in the specification of its patent. Global timely filed an appeal with the Federal Circuit.
The Federal Circuit began by explaining that the written description requirement is met when the specification clearly allows persons of ordinary skill to recognize that the inventor has, in fact, invented what is claimed. Next, the Federal Circuit determined that the Board legally erred in its analysis of whether the ’233 patent complies with the written description requirement because it failed to consider the predictability of the technology when substituting the claims with alternatives, which informs the level of detail required to satisfy the written description requirement. Therefore, contrary to the Board’s reasoning, the predictability of substituting generic plastics for thermoplastics in the skins and cellular cores of vehicle load floors was relevant to the written description inquiry.
Furthermore, Judge Stoll explained that the Federal Circuit has previously held, some 36 years ago, that “criticality or importance of an unclaimed limitation to the invention can be relevant to the written description inquiry.”
Although victorious, Global did not achieve everything it wanted. Global had requested the Federal Circuit to simply overrule the Board. Judge Stoll, however, explained that there was not support in the record sufficient to determine whether the “plastic” claim limitation was critical or important. Therefore, the Federal Circuit vacated the Board’s decision and ordered the Board, on remand, to address predictability and criticality of the claim term in question in order to determine whether the written description requirement has been satisfied.