Holding: Despite the presumption that a granted patent is valid, when a patent does not include sufficient explicit written description support, the patent owner may be required to provide evidence of validity. The allowance of a claim amendment without objection by an examiner does not, on its own, provide evidence of sufficient written description support.
Mondis owns US Patent No. 7,475,180, which describes a system for controlling a display unit, such as a computer monitor, that receives video signals from an external source. The unit stores identification numbers in memory and may be controlled by a computer that transmits a matching ID. If the computer’s ID matches one stored in the display unit, then the computer is allowed to control certain aspects of the display unit. The transmittal of identification numbers may also be reversed so that the display unit sends a unique identification number that can be matched to a number stored in the computer.
The specification of the ‘180 Patent consistently describes a unique ID number for each device. However, in order to overcome prior art during prosecution, the claims were amended from stating “an identification number for identifying said display unit” to recite “an identification number for identifying at least a type of said display unit.”
Mondis sued LG for infringement of the ‘180 Patent. LG challenged the claims of the ‘180 Patent that included the type limitation as being invalid for lacking written description. LG argued that the ‘180 Patent supported the claims as originally written that recited an ID number for identifying a certain display unit, but did not support an ID number that identified a certain type of display unit. However, at trial, the jury found the ‘180 Patent to not be invalid and to be infringed. LG filed a motion for judgment as a matter of law (JMOL), but this motion was denied.
The Federal Circuit found that the district court erred in denying LG’s motion for JMOL, stating that no reasonable jury could find the ‘180 Patent to have sufficient written description to support the type limitation that was added to the claims during prosecution. To satisfy the written description requirement, an applicant is not required to recite the claimed invention word for word, but the specification must reasonably convey to a person skilled in the art that the inventor had possession of the claimed invention as of the filing date. Actual possession or reduction to practice outside of the specification is not enough. Instead, the specification itself must demonstrate possession.
Mondis argued that because a patent is presumed to be valid after issuance, they were not required to provide evidence that there was adequate written description support. In some instances, this is true. However, in cases where there is clearly a lack of support for a claim limitation in the written description of the patent, additional evidence is required to prove that support exists.
In this case, the ‘180 Patent does not expressly disclose the type limitation that was added in the amendments to the claims. The ‘180 Patent consistently describes the ID number as being associated with a specific computer or display device. Mondis’ expert even agreed that the specification does not expressly recite the type limitation. However, this does not automatically mean that the ‘180 Patent is invalid. If there is substantial evidence showing that the ‘180 Patent disclosed the type limitation in a less express way, there may still be sufficient written description support.
Mondis argued that its expert testimony, admissions made by LG’s expert, and the prosecution history each provided substantial evidence to support the finding of validity. However, the Federal Circuit found none of these arguments persuasive. Mondis’ expert testified that the ID number is sent to a computer from the display device and the computer can identify that the display device has a communication function. However, the sentence right after this portion of the specification states that the computer communicates with a specific display device rather than a certain type of display device. Additionally, this expert testimony was presented to show infringement rather than validity.
Substantial evidence to support validity also could not be shown by the prosecution history. Mondis argued that because the type limitation was added to overcome a prior art rejection and because this amendment was allowed without objection by the examiner, then the ‘180 Patent is entitled to a presumption of written description support. However, the failure of an examiner to bring an objection for lack of written description does not automatically create a presumption of adequate support. In this case, there is no evidence that the examiner considered whether the specification had sufficient written description support for the claim amendment. This does not qualify as substantial evidence that the ‘180 Patent had support for the type limitation in the amended claims.
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