As to technical details, this being a family weblog and all that nonsense, let's just say that a prolonged ligation restricts blood flow, causing atrophy, resulting in the sound of a small thud from a fall.

The dangling issue is priority date. The later '553 and '329 patents are continuations-in-part (CIP) of '434.

While admitting the relationship of the ’553 and ’329 patents to the ’434 patent, Wadsworth argued that those patents are not entitled to priority back to the ’434 patent because the ’434 patent does not satisfy 35 U.S.C. § 112, ¶1 with respect to the caulking gun-type tightening mechanism. The district court agreed...

Without benefit of the '434 priority date, one of Wadsworth's intervening (in time) patents was found to anticipate Callicrate's later-filed '553 & '329 patents.

In the United States, a claim of priority to an earlier filed application(s) is governed by the provisions of 35 U.S.C. § 120. Section 120 provides, in part:

An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States . . . shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application[.]

35 U.S.C. § 112 ¶1 "requires, in part, that the application ‘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.’"

In the present case, the district court determined that the ’434 patent did not contain adequate “disclosure” or “support” for the use of a caulking gun-type tightening mechanism for three reasons: (1) the only disclosure of the caulking gun-type tightening mechanism is in the background section; (2) the background section contains disparaging remarks about this mechanism; and (3) Callicrate distinguished his winding assembly mechanism from the caulking gun-type tightening mechanism during prosecution. See Summary Judgment Order, slip op. at 13-14. These three reasons, even in combination, do not support the district court’s conclusion of no enablement.

First, a patent specification may sufficiently enable a feature under § 112, ¶ 1, even if only the background section provides the enabling disclosure. See Micro Chem., 194 F.3d at 1259-60 (finding that, under a §112, ¶ 6 analysis, the claims encompass a weigh dump method despite the fact that the only disclosure of this method was in the background section); United States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988) (“The test of enablement is whether one reasonably skilled in the art could make or use the invention from disclosures in the patent coupled with information known in the art without undue experimentation.”) (emphasis added).

Moreover, contrary to the district court’s opinion, the background section’s discussion of problems with the caulking gun-type tightening mechanism does not mean that one of ordinary skill in the art would not, after reading this discussion, know how to make and use this feature. Indeed this court has stated that disparaging remarks in a background section or remarks characterizing the prior art as less effective do not remove those disclosures as enabling references. See Micro Chem., 194 F.3d at 1260.

Finally, the ’434 patent’s prosecution history is no more dispositive than the noted comments in the background section.

The CAFC thus put the priority of Callicrate's later '553 & '329 back to that of the earlier '434, with remand. The squeeze is back on.