890 F.3d 1042
Fed. Cir.2018Background
- D Three Enterprises sued SunModo and Rillito River Solar (EcoFasten) for infringement of three patents (the Patents‑in‑Suit) directed to roof‑mount sealing assemblies. District Court granted summary judgment for defendants, finding most asserted claims invalid.
- The Patents‑in‑Suit claimed priority to a February 5, 2009 provisional application (the 2009 Application); without that priority date, accused products (available in 2009–2010) are prior art.
- Central dispute: whether the 2009 Application provides adequate written description under 35 U.S.C. § 112(a) to support (a) washerless assemblies using a range of attachment brackets and (b) assemblies with washers located below the flashing.
- District Court found the 2009 Application disclosed only a single washerless embodiment using a specific W‑pronged bracket (bracket 1700) and disclosed washers only above the flashing, so broader claimed genera were not supported.
- D Three conceded that, without the 2009 date, intervening prior art would invalidate the patents; the Federal Circuit affirmed the District Court’s grant of summary judgment holding the asserted claims lacked written description and thus could not claim the 2009 priority date.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the 2009 Application provides written description for washerless assemblies covering various attachment brackets | 2009 Application discloses washerless embodiment(s) and boilerplate/modification language supports broader bracket genus | 2009 Application only discloses a single washerless embodiment using bracket 1700 (W‑shaped prongs); no disclosure of other washerless brackets | Held: No — written description inadequate for washerless genus; claims not entitled to 2009 priority |
| Whether the 2009 Application provides written description for assemblies with washers below the flashing | 2009 Application shows washered and washerless systems and contains no disclaimer of washer position, thus supports claimed washer positions | 2009 Application discloses washers only located above the flashing; no disclosure or support for washers below | Held: No — written description inadequate for washer‑below‑flashing claims; claims not entitled to 2009 priority |
| Whether summary judgment was improper because defendants did not expressly raise the bracket‑genus theory | D Three argued lack of notice/prejudice under Rule 56(f) because the specific theory was not raised | Defendants’ motion and briefing put priority/written‑description at issue; D Three had opportunity to present evidence and respond | Held: No prejudice; summary judgment on this ground was proper because D Three had notice and opportunity to respond |
| Whether expert testimony created a factual dispute on written description | D Three’s expert purportedly supported broader disclosure | Expert did not address why other bracket types are disclosed; conclusory statements insufficient | Held: Expert evidence insufficient to create genuine dispute; summary judgment appropriate |
Key Cases Cited
- Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (written‑description requires disclosure showing inventor possessed claimed invention; genus must be supported by representative species or common structural features)
- Amgen Inc. v. Sanofi, 872 F.3d 1367 (Fed. Cir. 2017) (applies Ariad to genus claims and written‑description sufficiency)
- PowerOasis, Inc. v. T‑Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir. 2008) (written‑description is a factual inquiry amenable to summary judgment when no reasonable factfinder could find for non‑movant)
- In re Owens, 710 F.3d 1362 (Fed. Cir. 2013) (assessing whether a prior application discloses claimed subject matter for priority purposes)
- In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016) (patentee bears burden to prove entitlement to earlier priority date)
- Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) (disclosure plus ordinary‑skill knowledge cannot substitute for actual written description of claimed limitations)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (U.S. 1986) (summary judgment standard: evidence of non‑movant is to be believed and all justifiable inferences drawn in their favor)