Grüneberg and Myers - Intellectual Property Law


News and Recent Developments

Predictability and Criticality in Written Description

The Fed. Cir., in Global IP Holdings, vacated and remanded the PTAB’s decision of a lack of written description in a broadening reissue.  Patentee had sought to broaden claims to a carpeted automotive vehicle load floor from a composite panel comprising thermoplastic skins and a thermoplastic cellular core to cover other plastic materials.  In support of broader claims, patentee submitted, patent and technical paper evidence and a declaration from the inventor that, at the time of the invention, he was aware of other plastics than thermoplastics, for this purpose. The Board reasoned that the specification was limited in its description of thermoplastics, independent of the predictability of substituting alternatives.  In vacating the Board’s decision the Fed. Cir. cites to their Ariad decision that the level of detail varies depending on the nature and scope of the claims, and the complexity and predictability of the relevant technology.  The Fed. Cir. also cited to their In re Peters decision supporting broadening claims for non-critical claim limitations.  Evidence in support of predictability and criticality matter when arguing written description.

Richard Chinn