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April 20, 2005
§112 Rocket Science
Space Science/Loral received a patent (4,537,375) for saving fuel in rocket thrust maneuvers to maintain orientation and attitude of a satellite in space. Gravitational tugs by the earth, sun, and moon require positional adjustments. Things just don't sit still in space.
The claimed maneuver was a two-step process: fire thrusters once, consider what that did, then adjust if necessary. Lockheed convinced the district court in a summary judgment motion that there was not sufficient disclosure of the considering and adjusting portions of the claim. The Court of Appeals fired their thrusters with a different attitude.
The Court of Appeals (CAFC) pointed out that that specification adequately described all aspects of the maneuver, something even Lockheed's expert witness conceded. As always, the rocket fuel of a ruling is in the legal logic.
Space Systems/Loral Inc. v. Lockheed Martin Corp. (04-1501)
For the grant of summary judgment of invalidity on written description grounds, failure of compliance must be shown as a matter of law, or as a question of ultimate fact even when any disputed facts and factual inferences are resolved against the movant. See Fed. R. Civ. P. 56(c) ("The judgment shall be rendered forthwith if...there is no genuine issue of material fact and...the moving party is entitled to judgment as a matter of law.")
The written description requirement derives from 35 U.S.C. §112 ¶1, which states: The 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.
The written description is the technologic disclosure of the invention. It serves the fundamental patent purpose of making known what has been invented, including any variations and alternatives contemplated by the inventor. The descriptive text shows that the inventor possessed the technologic information for which exclusivity is claimed, and discloses the invention to the public. Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
The written description, although it need not include information that is already known and available to the experienced public, must be in sufficient detail to satisfy the statutory requirements, employing "[w]ords, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention." Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
Posted by Patent Hawk at April 20, 2005 6:49 PM | § 112