935 F.2d 1555 (Fed. Cir. 1991), 90-1528, Vas-Cath Inc. v. Mahurkar

Docket Nº90-1528, 91-1032.
Citation935 F.2d 1555
Party Name19 U.S.P.Q.2d 1111 VAS-CATH INCORPORATED and Gambro, Inc., Plaintiffs-Appellees, v. Sakharam D. MAHURKAR, and Quinton Instruments Company, Defendants-Appellants.
Case DateJune 07, 1991
CourtUnited States Courts of Appeals, Court of Appeals for the Federal Circuit

Page 1555

935 F.2d 1555 (Fed. Cir. 1991)

19 U.S.P.Q.2d 1111

VAS-CATH INCORPORATED and Gambro, Inc., Plaintiffs-Appellees,

v.

Sakharam D. MAHURKAR, and Quinton Instruments Company,

Defendants-Appellants.

Nos. 90-1528, 91-1032.

United States Court of Appeals, Federal Circuit

June 7, 1991

Rehearing Denied July 8, 1991.

Suggestion for Rehearing In Banc

Declined July 29, 1991.

Page 1556

William L. Mentlik, Lerner, David, Littenberg, Krumholz & Mentlik, Westfield,

Page 1557

N.J., argued, for plaintiffs-appellees. With him on the brief, were Roy H. Wepner, John R. Nelson and Joseph S. Littenberg.

Raymond P. Niro, Niro, Scavone, Haller & Niro, Chicago, Ill., argued, for defendants-appellants. With him on the brief, were Joseph N. Hosteny and John C. Janka. Of Counsel was Michael P. Mazza.

Michael J. Sweedler, Darby & Darby, New York City, represented defendants-appellants, Quinton Instruments Co.

Before RICH, MICHEL and PLAGER, Circuit Judges.

RICH, Circuit Judge.

Sakharam D. Mahurkar and Quinton Instruments Company (collectively Mahurkar) appeal from the September 12, 1990 partial final judgment 1 of the United States District Court for the Northern District of Illinois, Easterbrook, J., sitting by designation, in Case No. 88 C 4997. Granting partial summary judgment to Vas-Cath Incorporated and its licensee Gambro, Inc. (collectively Vas-Cath), the district court declared Mahurkar's two United States utility patents Nos. 4,568,329 ('329 patent) and 4,692,141 ('141 patent), titled "Double Lumen Catheter," invalid as anticipated under 35 U.S.C. Sec. 102(b). In reaching its decision, reported at 745 F.Supp. 517, 17 USPQ2d 1353, the district court concluded that none of the twenty-one claims of the two utility patents was entitled, under 35 U.S.C. Sec. 120, to the benefit of the filing date of Mahurkar's earlier-filed United States design patent application Serial No. 356,081 ('081 design application), which comprised the same drawings as the utility patents, because the design application did not provide a "written description of the invention" as required by 35 U.S.C. Sec. 112, first paragraph. We reverse the grant of summary judgment with respect to all claims.

BACKGROUND

Sakharam Mahurkar filed the '081 design application, also titled "Double Lumen Catheter," on March 8, 1982. The application was abandoned on November 30, 1984. Figures 1-6 of the '081 design application are reproduced below.

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As shown, Mahurkar's catheter comprises a pair of tubes (lumens) designed to allow blood to be removed from an artery, processed in an apparatus that removes impurities, and returned close to the place of removal. Prior art catheters utilized concentric circular lumens, while Mahurkar's employs joined semi-circular tubes that come to a single tapered tip. Advantageously, the puncture area of Mahurkar's semicircular catheter is 42% less than that of a coaxial catheter carrying the same quantity of blood, and its conical tip yields low rates of injury to the blood. The prior art coaxial catheters are now obsolete; Mahurkar's catheters appear to represent more than half of the world's sales. 745 F.Supp. at 520, 17 USPQ2d at 1353-54.

After filing the '081 design application, Mahurkar also filed a Canadian Industrial Design application comprising the same drawings plus additional textual description. On August 9, 1982, Canadian Industrial Design 50,089 (Canadian '089) issued on that application.

More than one year later, on October 1, 1984, Mahurkar filed the first of two utility patent applications that would give rise to the patents now on appeal. Notably, both utility applications included the same drawings as the '081 design application. 2 Serial No. 656,601 ('601 utility application)

Page 1559

claimed the benefit of the filing date of the '081 design application, having been denominated a "continuation" thereof. In an Office Action mailed June 6, 1985, the Patent and Trademark Office (PTO) examiner noted that "the prior application is a design application," but did not dispute that the '601 application was entitled to its filing date. On January 29, 1986, Mahurkar filed Serial No. 823,592 ('592 utility application), again claiming the benefit of the filing date of the '081 design application (the '592 utility application was denominated a continuation of the '601 utility application). In an office action mailed April 1, 1987, the examiner stated that the '592 utility application was "considered to be fully supported by applicant's parent application SN 356,081 filed March 8, 1982 [the '081 design application]." The '601 and '592 utility applications issued in 1986 and 1987, respectively, as the '329 and '141 patents, the subjects of this appeal. The independent claims of both patents are set forth in the Appendix hereto.

Vas-Cath sued Mahurkar in June 1988, seeking a declaratory judgment that the catheters it manufactured did not infringe Mahurkar's '329 and '141 utility patents. 3 Vas-Cath's complaint alleged, inter alia, that the '329 and '141 patents were both invalid as anticipated under 35 U.S.C. Sec. 102(b) by Canadian '089. Vas-Cath's anticipation theory was premised on the argument that the '329 and '141 patents were not entitled under 35 U.S.C. Sec. 120 4 to the filing date of the '081 design application because its drawings did not provide an adequate "written description" of the claimed invention as required by 35 U.S.C. Sec. 112, first paragraph.

Mahurkar counterclaimed, alleging infringement. Both parties moved for summary judgment on certain issues, including validity. For purposes of the summary judgment motion, Mahurkar conceded that, if he could not antedate it, Canadian '089 would represent an enabling and thus anticipating Sec. 102(b) reference against the claims of his '329 and '141 utility patents. 745 F.Supp. at 521, 17 USPQ2d at 1355. Vas-Cath conceded that the '081 design drawings enabled one skilled in the art to practice the claimed invention within the meaning of 35 U.S.C. Sec. 112, first paragraph. Id. Thus, the question before the district court was whether the disclosure of the '081 design application, namely, the drawings without more, adequately meets the "written description" requirement also contained in Sec. 112, first paragraph, so as to entitle Mahurkar to the benefit of the 1982 filing date of the '081 design application for his two utility patents and thereby antedates Canadian '089.

Concluding that the drawings do not do so, and that therefore the utility patents are anticipated by Canadian '089, the district court held the '329 and '141 patents wholly invalid under 35 U.S.C. Sec. 102(b), id. at 524, 17 USPQ2d at 1358, and subsequently granted Mahurkar's motion for entry of a partial final judgment under Fed.R.Civ.P. 54(b) on the validity issue. This appeal followed.

DISCUSSION

The issue before us is whether the district court erred in concluding, on summary judgment, that the disclosure of the '081 design application does not provide a Sec. 112, first paragraph "written description" adequate to support each of the claims of

Page 1560

the '329 and '141 patents. If the court so erred as to any of the 21 claims at issue, the admittedly anticipatory disclosure of Canadian '089 will have been antedated (and the basis for the court's grant of summary judgment nullified) as to those claims.

In reviewing the district court's grant of summary judgment, we are not bound by its holding that no material facts are in dispute, and must make an independent determination as to whether the standards for summary judgment have been met. C.R. Bard, Inc. v. Advanced Cardiovascular Systems, 911 F.2d 670, 673, 15 USPQ2d 1540, 1542-43 (Fed.Cir.1990). Summary judgment will not lie if the dispute about a material fact is "genuine," that is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986).

The "Written Description" Requirement of Sec. 112

The first paragraph of 35 U.S.C. Sec. 112 requires that

[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

(Emphasis added). Application of the "written description" requirement, derived from the portion of Sec. 112 emphasized above, is central to resolution of this appeal. The district court, having reviewed this court's decisions on the subject, remarked that "[u]nfortunately, it is not so easy to tell what the law of the Federal Circuit is." 745 F.Supp. at 522, 17 USPQ2d at 1356. Perhaps that is so, and, therefore, before proceeding to the merits, we review the case law development of the "written description" requirement with a view to improving the situation. 5

The cases indicate that the "written description" requirement most often comes into play where claims not presented in the application when filed are presented thereafter. Alternatively, patent applicants often seek the benefit of the filing date of an earlier-filed foreign or United States application under 35 U.S.C. Sec. 119 or 35 U.S.C. Sec. 120, respectively, for claims of a later-filed application. The question raised by these situations is most...

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610 practice notes
  • Examination Guidelines for Implementing the First-Inventor-to-File Provisions of the Leahy-Smith America Invents Act
    • United States
    • Federal Register July 26, 2012
    • July 26, 2012
    ...\23\ Rasmussen v. SmithKline Beecham Corp., 413 F.3d 1318 (Fed. Cir. 2005). \24\ Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562 (Fed. Cir. 1991) (``As the court pointed out, `the description of a single embodiment of broadly claimed subject matter constitutes a description of the invention ......
  • Patents: Patent application examination— Written description requirement; guidelines; comment request,
    • United States
    • Federal Register December 21, 1999
    • December 16, 1999
    ...to set out a general, systematic examination of the case law on written description. Comments mentioned Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 19 USPQ2d 1111 (Fed. Cir. 1991), in particular as important for summarizing the state of the law as the Federal Circuit sees it. Other comments ......
  • Reports and guidance documents; availability, etc.: Written description requirement; examination guidelines,
    • United States
    • Federal Register January 05, 2001
    • December 29, 2000
    ...Cir. 1997), is bad law and should not be followed by the USPTO because it conflicts with binding precedent, such as Vas-Cath v. Mahurkar, 935 F.2d 1555, 19 USPQ2d 1111 (Fed. Cir. 1991). Response: The final Guidelines are based on the Office's current understanding of the law and are believe......
  • Supplementary Examination Guidelines:
    • United States
    • Federal Register February 09, 2011
    • January 21, 2011
    ...\86\ Note that drawings may provide a written description of an invention as required by 35 U.S.C. 112. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991). The corresponding structure, material, or acts may be disclosed in the original drawings, figures, tables, or sequence......
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571 cases
  • 279 F.Supp.2d 530 (D.Del. 2003), Civ.A. 01-51, Fisher-Price, Inc. v. Safety 1st, Inc.
    • United States
    • Federal Cases United States District Courts 3th Circuit District of Delaware
    • August 28, 2003
    ...persons of ordinary skill in the art to recognize that the inventor had possession of the claimed invention. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed.Cir. 1991). Finally, amended claims that introduce elements or limitations which are not supported by the as-filed disclosure viol......
  • 348 F.Supp.2d 713 (N.D.W.Va. 2004), Civ. A. 102CV32, Ortho-McNeil Pharmaceutical, Inc. v. Mylan Laboratories, Inc.
    • United States
    • Federal Cases United States District Courts 4th Circuit Northern District of West Virginia
    • December 23, 2004
    ...112). Whether a parent application sufficiently describes the invention is a highly fact-specific inquiry. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562 (Fed.Cir. 1991); Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed.Cir. 1985). Although "a disclosure in a parent......
  • 490 F.Supp.2d 262 (D.R.I. 2007), C. A. 05-229, Bowling v. Hasbro, Inc.
    • United States
    • Federal Cases United States District Courts 1st Circuit District of Rhode Island
    • May 30, 2007
    ...words, drawings may be used in the same manner and with the same limitations as the specification."); cf. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565-67 (Fed.Cir.1991) (noting that "drawings alone may provide a 'written description' of an invention"). Under Hasbro's strict......
  • 686 F.Supp.2d 1337 (CIT 2010), 04-00650, United States v. UPS Customhouse Brokerage, Inc.
    • United States
    • Federal Cases Court of International Trade
    • January 28, 2010
    ...Inc. v. United States, 52 F.3d 363 (D.C.Cir.1995); Coteau Props. Co. v. Dep't of Interior, 53 F.3d 1466 (8th Cir.1995); Tomas v. Rubin, 935 F.2d 1555 (9th Cir.1991); Pollgreen v. Morris, 770 F.2d 1536 (11th Cir.1985); Ommaya v. Nat'l Insts. of Health, 726 F.2d 827 (D.C.Cir.1984); and Kamhea......
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12 firm's commentaries
  • Protection of Designs in the United States
    • United States
    • JD Supra United States
    • May 8, 2014
    ...image forms no part of the claimed design;” [52]Racing Strollers Inc. v. TRI Industries, Inc., 11 USPQ 2d 1300 (Fed Cir 1989). [53] 935 F.2d 1555, 19 USPQ2d 1111 (Fed Cir 1991). [54] 878 F.2d 1418, 11 USPQ2d 1300 (Fed Cir in banc 1989). [55]In re Daniels, 46 USPQ2d 1788 (Fed Cir, 1998). [56......
  • The Written Description Requirement
    • United States
    • LexBlog United States
    • December 17, 2014
    ...in the specification, abstract, or the drawings, as long as it is there on the filing date of the application. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). Look to the “four corners of the specification” for adequate disclosure. Ariad, 598 F.3d at 1366. A mere wish or pl......
  • Patent Federal Circuit Update
    • United States
    • Mondaq United States
    • May 16, 2002
    ...did not satisfy the written description requirement. The Majority Opinion On appeal, Enzo argued that under Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991), written description requires a factual inquiry, and that Enzo's expert, who testified that the disclosure "inhere......
  • Perils of Reissue - Recapture Doctrine Has Teeth!
    • United States
    • JD Supra United States
    • June 7, 2011
    ...that supports the claims having the desired scope. 35 U.S.C. §112, first paragraph; 35 U.S.C. §120; and Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114 (Fed. Cir....
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17 books & journal articles
  • Indefiniteness as an invalidity defense.
    • United States
    • William and Mary Law Review Vol. 58 Nbr. 4, March 2017
    • March 1, 2017
    ...that actual possession does not suffice and requiring the specification to communicate possession); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). (101.) See, e.g., Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). (102.) See, e.g., Martek Biosc......
  • The teaching function of patents.
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    • Notre Dame Law Review Vol. 85 Nbr. 2, February 2010
    • February 1, 2010
    ...is based, and to demonstrate that the patentee was in possession of the invention that is claimed"); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991) (explaining that the written description must convey with "reasonable clarity" to the PHOSITA that the appli......
  • Reconsidering estoppel: patent administration and the failure of Festo.
    • United States
    • University of Pennsylvania Law Review Vol. 151 Nbr. 1, November 2002
    • November 1, 2002
    ...the enablement and written description requirements). (53) Thomas, supra note 8, at 231. (54) See, e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560-64 (Fed. Cir. 1991) (reviewing the assertion that patents should be disallowed a certain filing date for lack of "adequate `written de......
  • Ordinary creativity in patent law: the artist within the scientist.
    • United States
    • Missouri Law Review Vol. 75 Nbr. 1, December - December 2010
    • December 22, 2010
    ...Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1224 (Fed. Cir. 2006) (discussing the doctrine of enablement); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991) ("[T]he description must clearly allow persons of ordinary skill in the art to recognize that [he or she] invente......
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10 provisions
  • Examination Guidelines for Implementing the First-Inventor-to-File Provisions of the Leahy-Smith America Invents Act
    • United States
    • Federal Register July 26, 2012
    • July 26, 2012
    ...\23\ Rasmussen v. SmithKline Beecham Corp., 413 F.3d 1318 (Fed. Cir. 2005). \24\ Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562 (Fed. Cir. 1991) (``As the court pointed out, `the description of a single embodiment of broadly claimed subject matter constitutes a description of the invention ......
  • Patents: Patent application examination— Written description requirement; guidelines; comment request,
    • United States
    • Federal Register December 21, 1999
    • December 16, 1999
    ...to set out a general, systematic examination of the case law on written description. Comments mentioned Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 19 USPQ2d 1111 (Fed. Cir. 1991), in particular as important for summarizing the state of the law as the Federal Circuit sees it. Other comments ......
  • Reports and guidance documents; availability, etc.: Written description requirement; examination guidelines,
    • United States
    • Federal Register January 05, 2001
    • December 29, 2000
    ...Cir. 1997), is bad law and should not be followed by the USPTO because it conflicts with binding precedent, such as Vas-Cath v. Mahurkar, 935 F.2d 1555, 19 USPQ2d 1111 (Fed. Cir. 1991). Response: The final Guidelines are based on the Office's current understanding of the law and are believe......
  • Supplementary Examination Guidelines:
    • United States
    • Federal Register February 09, 2011
    • January 21, 2011
    ...\86\ Note that drawings may provide a written description of an invention as required by 35 U.S.C. 112. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991). The corresponding structure, material, or acts may be disclosed in the original drawings, figures, tables, or sequence......
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