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June 7, 2009

No Bubbles

The American anachronism of patent interferences to determine priority often creates a mess when invoked. And so it was when Affymetrix concocted an interference against Agilent for a genetic analysis technique involving mixing fluids. The BPAI gave the prize to Affymetrix, after Agilent couldn't convince the Board that Affymatrix was playing fast and loose meeting the written description requirement. Agilent pursued it to district court and lost again, leaving the CAFC to clean up.

Agilent Technologies v. Affymetrix (CAFC 2008-1466)

Agilent's Schembri patent discloses a method of conducting a hybridization reaction in a closed chamber. The method forms a bubble in the fluid, and then moves the bubble to cause mixing.

To get an earlier priority date than Agilent, which was 1998, Affymetrix had to wind the disclosure clock back to an earlier continuation, dated 1995.

Affymetrix had copied claims to provoke the interference. Splitting hairs in the interference game runs into two conflicting precedents, one related to prior art (Rowe) and one to purely gaming an interference (Spina), as in this case.

To decide which specification informs the interpretation of the contested claims, this court must examine two of its prior decisions, In re Spina, 975 F.2d 854 (Fed. Cir. 1992), and Rowe v. Dror, 112 F.3d 473 (Fed. Cir. 1997). In Spina, the applicant copied a claim from the "Barron" patent to provoke an interference. The Board, in considering whether Spina's specification contained an adequate written description of the claim clause at issue, viewed the claim in light of the Barron disclosure, from which the claim had been copied. This court agreed with that approach: "When interpretation is required of a claim that is copied for interference purposes, the copied claim is viewed in the context of the patent from which it was copied." Spina, 975 F.2d at 856.

In Rowe v. Dror, Rowe copied several claims from the Dror patent to provoke an interference. During the motions period before the Board, Dror filed a motion seeking judgment against Rowe on the ground that a third party patent anticipated some of Rowe's claims corresponding to the interference count. On appeal from a holding of invalidity, this court discussed which specification - Rowe's or Dror's - should be used to interpret Rowe's claims:

[37 C.F.R.] section 1.633(a) allows the PTO to consider the novelty or non-obviousness of each application's claims as if the application stood alone. In this posture, the PTO properly interprets the claim in light of its host disclosure, just as it would during ex parte prosecution. Thus, this court looks to the Rowe application to determine the meaning of the phrase at issue.

Rowe, 112 F.3d at 479. Recognizing that this result was at odds with Spina, this court expressly distinguished the two cases:

In Spina, this court considered whether an applicant was eligible to copy a patentee's claim and thereby challenge priority of invention, a question that turned on whether the copying party's specification adequately supported the subject matter claimed by the other party. This court held, in that context, that a copied claim is interpreted in light of its originating disclosure. This Spina rule sought to ensure that the PTO would only declare an interference if both parties had a right to claim the same subject matter. However, that rule does not apply in cases, such as this one, where the issue is whether the claim is patentable to one or the other party in light of prior art. In this posture, the PTO and this court must interpret the claim in light of the specification in which it appears.


This case calls for application of the Spina rule, because the question is "whether the copying party's specification [Besemer] adequately supported the subject matter claimed by the other party [Schembri]." Id. Stated more directly, does Besemer have adequate basis to copy Schembri's claim and thereby challenge Schembri's priority of invention? This case does not present the Rowe situation, "where the issue is whether the claim is patentable to one or the other party in light of prior art." Id.

The district court blew it in claim construction defining a "system of enclosures" and a "closed chamber," being too loose in light of the "the right disclosure". Figuring out what the "the right disclosure" was non-trivial.

The crux issue was whether Affymetrix had fulfilled § 112 ¶ 1.

The written description doctrine prohibits new matter from entering into claim amendments, particularly during the continuation process. As this court stated in In re Wright:

When the scope of a claim has been changed by amendment in such a way as to justify an assertion that it is directed to a different invention than subject matter was described in the patent application when filed as the invention of the applicant. That is the essence of the so-called "description requirement" of § 112, first paragraph.

866 F.2d 422, 424 (Fed. Cir. 1989) (emphasis in original). Adequate written description means that the applicant, in the specification, must "convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the [claimed] invention." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Satisfaction of the written description requirement is a question of fact. Conservolite, Inc. v. Widmayer, 21 F.3d 1098, 1100 (Fed. Cir. 1994).

Contrary to BPAI and district court, the CAFC found that Affymetrix hadn't sufficiently disclosed the requisite mixing of fluid using bubbles. Affymetrix's expert witness had admitted that, in reading the spec (Besemer), bubble generation wasn't guaranteed.

The very essence of inherency is that one of ordinary skill in the art would recognize that a reference unavoidably teaches the property in question. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) ("Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient."); Hitzeman v. Rutter, 243 F.3d 1345, 1355 (Fed. Cir. 2001) ("an inherent property must necessarily be present in the invention . . . and it must be so recognized by persons of ordinary skill in the art"). Especially in light of this admission, Affymetrix's argument that the vortexer chamber might include an unmentioned void, and in turn, that that void might result in bubble generation, is insufficient under this court's precedent to establish inherency.

Besemer simply does not disclose a method of bubble mixing in a closed hybridization chamber, as required by the claims. Viewing the record in the light most favorable to Agilent, the district court erred by granting summary judgment in Affymetrix's favor.

As this court stated in Amgen Inc. v. Hoechst Marion Roussel Inc., "[t]he purpose of the written description requirement is to prevent an applicant from later asserting that he invented that which he did not; the applicant for a patent is therefore required to recount his invention in such detail that his future claims can be determined to be encompassed within his original creation." 314 F.3d 1313, 1330 (Fed. Cir. 2003) (citation omitted).

No bubbles. Reversed.

Posted by Patent Hawk at June 7, 2009 11:37 PM | § 112


I'm fairly new to patent law and I am wondering still what the result in this case means....Does Agilent's patent remain valid? Can Affymetrix still try to have Agilent's claim declared invalid as obvious, under 103 in view of the Bessemer application, as part of these proceedings?

Posted by: Patent Fish at June 18, 2009 7:28 AM