D Three Enterprises, LLC v. Sunmodo Corp. / Rillito River Solar LLC (EcoFasten)

Docket No. 2017-1909, -1910

May 21, 2018

Brief summary: DC decision of invalidity for lack of written description (WD) affirmed because, e.g., “adequate [WD] does not ask what is permissible, rather, it asks what is disclosed” (Ariad, FC 2010).

Summary: D Three appealed DC grant of SJ to Sunmodo et al. that the claims of US 8,869,517; 9,068,339; and 8,707,655 related to roof mount sealing assemblies for solar panels invalid for lack of written description (WD) because the patents could not claim priority to a 2009 provisional application. The DC determined that the “Asserted Claims disclosed broader configurations of washerless assemblies” than disclosed in the 2009 provisional. The 2009 priority date was required since “SunModo’s allegedly infringing products were available to the public in 2010” and “EcoFasten’s allegedly infringing product was available to the public in June 2009.” D Three argued the DC erred in granting SJ because “there is a genuine issue as to whether” the 2009 Application would be understood “to have disclosed different types of washerless assemblies, and…assemblies with washers below the flashing”. The FC panel reviewed the DC decision under Tenth Circuit law, and the priority date issue under FC law (Abbvie, FC 2014; Go Med., FC 2006; PowerOasis, FC 2008). The FC panel explained that the WD of a patent “must clearly allow [a PHOSITA] to recognize that the inventor invented what is claimed” (Ariad, FC 2010 (“had possession of the claimed subject matter”)). The DC found that a particular attachment (“W[-]shaped prongs”) are not “optional” and that the claims “are not limited to such a bracket”. The FC panel first explained that D Three had sufficient opportunity to argue that the 2009 Application included “sufficient detail to disclose attachment brackets broadly” (FCRP 56(f)), in fact did so, and bore the burden to do so (In re Magnum Oil, FC 2016). “D Three did not dipute that except for” ‘655 claim 8 and ‘339 claim 4 “the [A]sserted [C]laims do not recite a…washer” and argued certain figures “disclose a washerless assembly.” The FC acknowledged this point (“the 2009 Application discloses one embodiment of a washerless assembly”) and then considered “whether a PHOSITA would recognize…that any attachment brackets as claim…could be used in washerless assemblies” (In re Owens, FC 2013). It agreed with the DC, finding “the 2009 Application in no way contemplates the use of other types of attachment brackets” and “never uses the term washerless”, and “boilerplate language at the end…is not sufficnet to show adequate disclosure of the actual combinations and attachments”, based in part on expert testimony (Lockwood, FC 1997 (“not sufficient…that the disclosure…would lead one to speculate as to the modifications that the inventor might have envisioned, but failed to disclose”); Knowles, FC 2018 (lack of WD for claims requiring specific type of soldering “where only general soldering was disclosed in a specification”)). The FC panel also agreed that ‘655 claim 8 and ‘339 claim 4 were invalid for lack of WD since the claims “recite a washer that can be either above or below the flashing” but “the 2009 Application discloses a washer only above the flashing” (“adequate [WD] does not ask what is permissible, rather, it asks what is disclosed” (Ariad, FC 2010)). The DC decision was therefore affirmed.

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