Anticipate This!™ | Patent and Trademark Law Blog

Mukherjee v. Chu.

Posted in Opinion Commentary by Jake Ward on March 2, 2007

 Recitation in the specification that a particular element was “critical” was used to invalidate claims under 35 U.S.C. § 112, ¶1.

(Fed. Cir. 2007, 06-1450), nonprecedential 


Mukherjee appealed the decision of the BPAI holding Mukherjee’s claims in Interference No. 105,281 unpatentable for failure to comply with the written description requirement of 35 U.S.C. § 112, ¶1.

Section 112,¶1 recites that:

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 technology at issue in Mukherjee’s U.S.Serial No. 09/795,915 relates to rechargeable lithium-sulfur batteries. The Mukherjee application disclosed that in addition to sulfur, the cathodes of the batteries contain an Electroactive Transition Metal Chalcogenide1 (“ETMC”) composition. As defined in the Mukherjee application, ETMC is “an electroactive material having a reversible lithium insertion ability, wherein the transition metal is at least one selected from the group consisting of Ti, V, Cr, Mn, Fe, Nb, Mo, Ta, W, Co, Ni, Cu, Y, Zr, Ru, Rh, Pd, Hf, Re, Os, and Ir, and the chalcogenide is at least one selected from the group consisting of O, S, and Se.”

Noticeably absent from the claims at issue in the interference was any requirement that the cathode contain an ETMC. That is, the claims at issue failed to recite ETMC as a limitation.

Written description is a question of fact, judged from the perspective of one of ordinary skill in the art as of the relevant filing date.The BPAI had conducted an extensive (64-page) analysis the Mukherjee application to determine whether it provided written description support for the claims at issue.  In particular, the BPAI observed that the Detailed Description of the Invention Section continued with the notion that an ETMC cathode is a distinguishing feature of the invention.   For example, the Detailed Description states:

The present invention also pertains to the design and configuration of composite cathodes of the present invention. The relative configuration of the electroactive sulfur-containing cathode material and the electroactive transition metal chalcogenide composition in the composite cathode is critical. In all cases, in order to retard out-diffusion of anionic reduction products from the cathode compartment in the cell, the sulfur-containing cathode material must be effectively separated from the electrolyte or other layers or parts of the cell by a layer of an electroactive transition metal chalcogenide composition. (Emphasis mine and CAFC).

Based on the review of the entire specification, the BPAI found that the application does not disclose non-ETMC cathodes as the invention or alternatives to the invention and does not characterize ETMC as an optional part of the cathode.  Expert testimony was also provided to assert that it would have been clear to one of skill in the art that the Mukherjee invention was limited to ETMC cathodes because it was the presence of chalcogenide in the cathode that overcame the drawbacks of previous sulfur batteries. 

In light of the above, the CAFC held that there is substantial evidence to support the Board’s determination that the Mukherjee application does not comply with the written description requirement of 35 U.S.C. § 112, ¶1.  A reasonable person would find the testimonial and documentary evidence sufficient to support the Board’s finding. 


Cargill v. Cambra Foods.

Posted in Opinion Commentary by Jake Ward on March 2, 2007

A reasonable examiner would certainly want to consider test data that is directly related to an important issue of patentability, along with the applicant’s interpretation of that data.

(Fed. Cir. 2007, 06-1265)

Cargill appealed from a final judgment of the district court (D. Or.) concerning four patents owned by Cargill, namely U.S. Patents No. 5,969,169 (the “’169 patent”), No. 6,201,145 (the “’145 patent”), No. 6,270,828 (the “’828 patent”), and No. 6,680,396 (the “’396 patent”).  The district court granted Cargill’s summary judgement that the ‘169 and ‘145 patents were infringed by Cambra et al., but entered judgment that the ’169 and ’145 patents were unenforceable due to inequitable conduct.  In reaching these decisions, the district court relied on two documents that contained the applicant’s internal testing data but that were not disclosed to the examiner during prosecution. Upon appeal, the CAFC affirmed the judgement of invalidity.

The technology at issue relate to a non-hydrogenated canola oil that possesses superior oxidative stability and fry stability, and is useful for food applications. Ordinary canola oil is unstable and easily oxidized during cooking, which creates an off-flavor in the food. It also develops an undesirable odor when being stored.  The oxidative stability of canola oil can be measured in at least two ways: in terms of AOM (Active Oxygen Method) hours, or in terms of peroxide and para-anisidine values.  Generic commercial canola oil typically has an oxidative stability of about 22 AOM hours, whereas the claimed oil has an oxidative stability of about 35 to 40 AOM hours.  During prosecution, Cargill argued successfully (based on data in the specifications of the applications) that two canola oils with similar fatty acid compositions have strikingly different oxidative stability values, and therefore a similar fatty acid composition as described by the prior art could not anticipate.

For the sake of simplicity, only the inequitable conduct issue is discussed herein.  To hold a patent unenforceable due to inequitable conduct, there must be clear and convincing evidence that the applicant (1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the U.S. Patent and Trademark Office (“PTO”).  If a misstatement or omission is material under the new Rule 56, it is material.  Similarly, if a misstatement or omission is material under the ‘reasonable examiner’ standard, it is also material.

Upon reviewing the district court’s findings on the threshold issues of materiality and intent for clear error,  the CAFC held that the district court findings that the applicant “unilaterally withheld information that unquestionably would have been viewed as worthy of serious consideration by the PTO, and might have resulted in the patents not being issued” was not clearly erroneous.   Given that a crucial issue during prosecution was whether the claimed oil possessed strikingly superior oxidative stability, it is quite certain that a “reasonable examiner” would consider such test data to be important in deciding whether to allow the patents to issue.  Materiality is determined from the viewpoint of a reasonable patent examiner, and not the subjective beliefs of the patentee.

The district court also found an intent to deceive based on several circumstantial factors: the repeated nature of the omission, the applicant’s motive to conceal, and the high materiality of the undisclosed information. The CAFC noted that the district court found that there were multiple occasions that called for disclosure of the omitted data.  An applicant should know information is material when the examiner repeatedly raises an issue to which the information relates.  Additionally, when an applicant knows or obviously should know that information would be material to the examiner, as was true here, but the applicant decides to withhold that information, “good faith” does not negate an intent to manipulate the evidence.  Thus, there is no error in the district court’s finding of intent.