The Evolving Written Description Doctrine and the Search for Specificity (A.K.A. Adequacy is the Matter of Invention.)

In 1996, the U.S. Supreme Court ruled in Markman that claim construction was a matter of law for the judge to decide. There was hope in the patent bar that Markman would bring uniformity to claim construction and a reduction to the lengthy process of patent litigation. Some authors report instead that the claim construction reversal rate is increasing. Other authors question the consistency of the rulings from the Court of Appeals for the Federal Circuit. Circuit Judge Rader of the Federal Circuit recently named this controversy the “Evolving Written Description Doctrine.” Behind this controversy primarily lies judicial interpretation of the patent statute, 35 U.S.C. § 112, with other statutes invoked periodically to support or counter differing opinions. These opinions suggest that the Court of Appeals for the Federal Circuit is invoking the judicial doctrine of possession to modify what the statutory requirements of enablement, best mode and definiteness. A patentee writing a broad embodiment may suffer invalidity for failing to satisfy the definiteness requirement. Conversely, an application with distinctly expressed embodiments may suffer from element exclusion and forfeit an otherwise acceptably broad embodiment. This article reviews the back-to-back cases of JVW Enterprises, Inc. v. Interact Accessories, Inc., and LizardTech, Inc. v. Earth Resource Mapping, Inc. The subsequent en banc denial in LizardTech evoked a declaration by Circuit Judge Rader that the Federal Circuit has created an “Evolving Written Description Doctrine,” in part over the court\u27s invocation of the possession test. Together with a discussion of the patent law and the judicial doctrines behind it, this article seeks to show that the Court of Appeals for the Federal Circuit is misapplying judicial doctrine (notably, the possession test) and lowering the standard for when this judicial doctrine applies