Layers of Doctrine with a Faulty Claim Construction at the Core

by Dennis Crouch

D Three Enterprises v. SunModo Corp. (Fed. Cir. 2018)

Looking through this determination feels akin to gradually peeling off the levels of an onion – hoping to reach some prize at the core but only achieving a rotten core.

D-Three’s patents in go well with are directed to roof-mount sealing assemblies for photo voltaic panel installation.  U.S. Patent Nos. 8,689,517 9,068,339 and 8,707,655.   The district courtroom located the asserted statements invalid as apparent or expected.  The standard central dispute, even so, was regardless of whether the statements could depend on a 2009 provisional application filing day.  Despite the fact that the formalities of the priority chain was met — the district courtroom located a substantive difficulty. In particular, the courtroom dominated that the 2009 provisional did not adequately disclose the inventions as claimed — i.e., failure of written description.  Heading one layer further, it appears that the true dispute is about claim design — do the claimed assemblies require a “washerless” strategy?  The courts located that the statements recite a washerless assembly but that the limitation was not disclosed by the provisional application — so no priority.

Unrecited Recitation: In the attraction, the Federal Circuit’s investigation commenced with its conclusion on the statements: “All Asserted Promises apart from [except two] recite washerless assemblies.” The difficulty with the assertion is that the statements really do not expressly recite a washerless assembly.  In its brief, D Three characterized the statements as “not includ[ing] a limitation that would require the presence of a washer. No claim in the Patents-in-Accommodate states that there can not be a washer, i.e., no claim requires an assembly be washerless.”  (See claim 1 underneath).

Unfortunately, the Federal Circuit goes no further in explaining its conclusion that the statements recite washerless assemblies but rather jumped into thought of regardless of whether the priority claim gives a enough disclosure.

35 U.S.C. § 120 gives for the correct-of-priority from prior U.S. purposes.  Underneath the statute, the priority claim only functions if the previously-submitted application adequately disclosed the creation currently being claimed in the later-submitted application.  In particular, the statute requires disclosure “in the way offered by portion 112(a).”  In other phrases, the previously-submitted application’s disclosure will have to satisfy the enablement and written description needs to guidance the statements of the later-submitted application. Here, the target was on written description — the necessity that the disclosure obviously will allow a PHOSITA “to figure out that the inventor invented what is claimed” and that the “inventor had possession of the claimed subject matter subject as of the filing day.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc).

Here, the provisional application does essentially disclose a washerless assembly, but only one.  Having said that, the appellate courtroom affirmed that that one precise case in point (using W-formed prongs) was not enough to supply written description guidance for the statements that ended up not minimal to W-formed prongs.  In accordance to the courtroom, the result is that we can only “speculate as to the modifications that the inventor might have envisioned, but unsuccessful to disclose.” Quoting Lockwood v. Am. Airways, Inc., 107 F.3d
1565 (Fed. Cir. 1997). At foundation, this circumstance seems to be a whole lot like Gentry GalleryLizardTech and ICU Professional medical, while none of these scenarios ended up cited.

In the conclude, we have a failure of written description unsuccessful priority claim and invalid patents.

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Notes:

Claim 1 of the ‘517 patent:

1. A roof standoff machine for use in mounting an item to a roof, said standoff machine comprising:

a foundation bracket possessing at least one mounting hole for acquiring an attachment ingredient for attaching the foundation bracket to a roof surface, said foundation bracket further together with a 1st threaded attachment ingredient

a flashing possessing:

a raised portion with an upper surface and an aperture extending by way of said raised portion, whereby said aperture is configured for alignment with said 1st threaded attachment ingredient of said foundation bracket

a flange extending beyond a foundation of said raised portion, whereby, when disposed in excess of said foundation bracket on the roof surface, an inside of surface of said raised portion receives and surrounds said foundation bracket and said flange rests on the roof surface

a core body possessing a 1st conclude and a 2nd conclude, said 2nd conclude possessing a get in touch with surface

a 2nd threaded attachment ingredient connected with said 2nd conclude of said core body, said 2nd threaded attachment ingredient configured to threadably engage said 1st threaded attachment ingredient, whereby, on said 1st and 2nd threaded attachment elements currently being threadably engaged, said flashing is compressed amongst said foundation bracket and said 2nd conclude of said core body and

said core body possessing a third attachment ingredient disposed proximate to said 1st conclude for attaching an item to said core body.

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