Crown Packaging Technology v. Ball Metal Beverage Container (CAFC 2010-1020) precedential; Newman, Dyk, and Whyte (author)

A can is made by slipping the ends on to the can body, which is a hollow cylinder. The ends are folded into a wall, called a "chuck wall", to receive the edge of can body, with the outside of the can end called a "reinforcing bead." The problem that the district court found with the common specification had to do with disclosure of the chuck wall.

Specifically, the district court held that the asserted claims cover driving a chuck either inside or outside of the reinforcing bead, but the specification only supports driving a chuck outside of the can end's reinforcing bead.

The parties agree that the specification teaches that "improvements in metal usage can be made by increasing the slope of the chuck wall and limiting the width of the anti peaking bead." Id. col.1 ll.33-35. However, the parties disagree as to whether the written description supports an invention that improves metal usage by increasing the slope of the chuck wall without a modified chuck that does not drive deeply into the reinforcing bead.

On to appeal.

A. Written Description

Summary judgment is appropriate "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). Thus, a court may grant summary judgment "when no reasonable jury could return a verdict for the nonmoving party." Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 136 (Fed. Cir. 2009) (citations omitted). "Compliance with the written description requirement is a question of fact but is amenable to summary judgment in cases where no reasonable fact finder could return a verdict for the nonmoving party." PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008) (citing Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1072-73 (Fed. Cir. 2005)). A district court's grant of summary judgment on written description is reviewed de novo. All Dental Prods LLC v. Advantage Dental Prods., 309 F.3d 774, 778 (Fed. Cir. 2002).

Ball argues that the common specification of the '826 and '875 patents teaches seaming and cans adapted to be seamed such that driving occurs only outside of the reinforcing bead. As such, Ball argues that the asserted claims, which cover driving either inside or outside of the can end's reinforcing bead, violate the written description requirement.

The written description requirement is contained within 35 U.S.C. § 112, which provides:

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 test for sufficiency of a written description is "whether the disclosure clearly 'allow[s] persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.'" Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1355, 1562- 63 (Fed. Cir. 1991)). The disclosure must "reasonably convey[ ] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Id. at 1351. Possession means "possession as shown in the disclosure" and "requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art." Id. Original claims are part of the specification and in many cases will satisfy the written description requirement. Id. at 1349. However, certain claims, such as claims to a functionally defined genus, will not satisfy the written description requirement without a disclosure showing that the applicant had invented species sufficient to support the claim. Id.

Crown's asserted claims are not broad genus claims or function claims simply describing the desired result of saving metal. Therefore, the critical question is whether the specification, including the original claim language, demonstrates that the applicants had possession of an embodiment that improved metal usage by increasing the slope of the chuck wall without also limiting the width of the reinforcing bead.

We agree with Crown that the written description supports the asserted claims... Simply put, the specification supports the asserted claims that achieve metal savings by varying the slope of the chuck wall alone.

[W]hile Ball is correct in noting that the embodiment drawings in the specification all show chuck drive outside the reinforcing bead, that does not compel the conclusion that the written description is so narrowly tailored as to preclude Crown from claiming an embodiment that only utilizes the angled chuck wall solution. See Lampi Corp. v. Am. Power Prods., 228 F.3d 1365, 1378 (Fed. Cir. 2000) (concluding that the drawings at issue were "merely a 'practical example' of the invention" and did not limit the patent to identical half-shells).

A "patentee need only describe the product as claimed, and need not describe an unclaimed method of making the claimed product." Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1331-33 (Fed. Cir. 2003). The district court, therefore, erred in holding that there was an inadequate written description supporting claim 14.

In sum, we hold that the district court erred in holding that the asserted claims violated the written description requirement. Therefore, we reverse and enter judgment for Crown on its cross-motion. See PowerOasis, 522 F.3d at 1307 (Fed. Cir. 2008) (noting that compliance with the written description requirement is subject to summary judgment if no reasonable fact finder could return a verdict for the non-moving party).

Judge Dyk dissented over written description, with solid reasoning, making this case a very close call.

Relying on Revolution Eyewear, the majority holds that the claims are valid. However, Revolution Eyewear, in holding that a claim may address only one of the purposes disclosed in the specification, still requires explicit disclosure of the embodiments in the claims: "Inventors can frame their claims to address one problem or several, and the written description requirement will be satisfied as to each claim as long as the description conveys that the inventor was in possession of the invention recited in that claim." Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358, 1367 (Fed. Cir. 2009) (emphasis added). Therefore, the claims, whether directed to solving a single problem or multiple problems, must still be grounded in the specification.

There is no question that the specification does not teach combining the sloped can end wall together with the wider, prior art bead and driving the chuck into the bead instead of the sloped can end wall. That combination is a new and distinct invention, and our written description jurisprudence requires that it be described in the specification. The fact that the claims are broad enough to cover such an invention or imply that the claims cover such an invention is not sufficient when the invention itself is not described either in the claims or elsewhere in the specification.

Under our written description precedent, failure to disclose a claimed invention is fatal to a claim's validity. In Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010), we held that "the hallmark of written description is disclosure." "[I]f the claimed invention does not appear in the specification, . . . the claim . . . fails regardless [of] whether one of skill in the art could make or use the claimed invention." Id. at 1348. The specification must convey with "reasonable clarity" to those of skill in the art that the inventor was in possession of the claimed invention as of the filing date of the patent application. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).

B. Anticipation

We review de novo grants of summary judgment based on § 102 anticipation. Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1327 (Fed. Cir. 2001). To challenge the patent, Ball must prove by clear and convincing evidence that Toyo discloses, either expressly or inherently, every limitation as asserted in the claims: "To anticipate a claim, a single prior art reference must expressly or inherently disclose each claim limitation . . . . But disclosure of each element is not quite enough-this court has long held that '[a]nticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.'" Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334-35 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542,1548 (Fed. Cir. 1983)). Moreover, inherent anticipation requires more than mere probabilistic inherency, see Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991), and more than the presence of an unrecognized de minimis quantity of claimed substance in the prior art. See In re Seaborg, 328 F.2d 996 (CCPA 1964). But these cases "do not show that inherency requires recognition" of the inherent element. See Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003).

Expert testimony figured into the district court finding.

Where there is a material dispute as to the credibility and weight that should be afforded to conflicting expert reports, summary judgment is usually inappropriate. Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1578 (Fed. Cir. 1991) ("To the extent that apparent inconsistencies among the [expert's] three declarations raise questions of credibility and weight . . . they were improperly resolved on summary judgment.").

Ball's various arguments regarding Mr. Higham's change in position during the prosecution and throughout the course of this litigation are proper matters for a jury to weigh in making a credibility determination. Accordingly, we reverse the district court's holding with respect to anticipation and remand for trial.

The panel demurred over obviousness.

Reversed and remanded. Costs to Crown.