This is part two of a three-part series on written description requirements and the developing case law under the America Invents Act (AIA).

The previous post in this series introduced the potential litigation hurdle – or, opportunity, depending on one’s perspective – involving the requirement that a “parent” patent application must satisfy the written description requirement with respect to claims of a later-filed “child” application.  While this requirement is well established under U.S. patent law, the interaction between the written description requirement and the AIA is a new wrinkle.

An AIA “transitional application” is one filed after March 16, 2013, which claims the effective filing date of an application filed on or before March 16, 2013.  If such a priority claim is justifiable, then the pre-AIA’s first-to-invent law applies to the claims of the transitional application, which is more favorable to the patent holder.  Otherwise, the AIA’s more rigid first-to-file scheme applies to all claims in the transitional application.

This post discusses pre-AIA cases on written description, which were decided against the patent holder.  It then discusses, hypothetically, how similar cases would be decided if the later-filed application was a transitional application.  The post concludes with practice pointers from the perspective of the patent drafter and the patent challenger in litigation.

In a case involving video game controllers, the disclosure found in a parent application was too narrow to support broader subject matter claimed in the later-filed application.  The subject claims were filed in November 2000, and involved a video game controller comprising multiple input members.  The patent holder asserted that these claims benefitted from the July 1996 filing date of an earlier, still-pending application with common inventors.  Importantly, Sony put out some products in the gap of years between the two filings, making it important for the subject claims to be accorded the July 1996 effective filing date.

However, the court held that the patentee was very specific in the 1996 application, in describing its controllers with a single input member rather than multiple ones.  The defense succeeded by pointing to over twenty explicit statements in the 1996 application that the invention is directed to a single input member.  Therefore, the claims at issue, as presented in the later-filed application, were not accorded the earlier filing date, rendering them invalid.  Similar reasoning was used to reach the same result in a case where a patentee limited the invention side-by-side recliners having their controls fixed to a console positioned between them.

To illustrate the unique issues that AIA presents, take the video game controller case, but change the dates.  Suppose the first application was filed in 2012, and the later-filed application with the subject claims was filed on a certain date in 2014 – exactly one day after the Sony product was first disclosed.  This is where the choice of law between pre-AIA first-to-invent versus the more rigid first-to-file approach of the AIA becomes important.  Given the one day difference presented in this hypothetical, the patent holder should easily be able to prove conception of the invention prior to the Sony reference and (in this hypothetical, at least) reasonable diligence toward reduction to practice.  By doing so, the pre-AIA law would enable the patent holder to remove the Sony reference from consideration.

However, if the AIA applied, it would be impossible in this hypothetical scenario to remove the reference – even one filed such a short time before – based on prior invention.  Thus, supporting the claim to priority of the original application would be the patent holder’s only chance to avoid the reference.  This hypothetical shows that a virtual carbon copy of a case could be decided in exact opposite fashion under the AIA compared to pre-AIA law.

To avoid the rigidity of the AIA, patent drafters working on a transitional application might consider including only those claims that are clearly disclosed in the original application.  An important point is that the claims in a transitional application must all be treated under either pre-AIA law, or the AIA.  Thus, suppose the transitional application contains 20 claims, 19 of which easily have written description support in the prior application.  But if the twentieth claim has no support in the prior application, then the more rigid first-to-file scheme under AIA will apply to all the claims in the transitional application.  Cost and risk-benefit factors will come into play for the patent drafter in these kinds of situations, because the twentieth claim might not be that important.  However, if it is very important, the option exists to include the twentieth claim in a separate application from the other 19.

Such decisions that patent drafters must make will also present a potential corollary opportunity for the patent challenger in litigation.  Based on the hypothetical discussed above, when defending against patent infringement it is advisable to consider all the claims in the transitional application – not just the ones being asserted – in light of the written description requirement.