CAFC Reverses Ruling That Beverage Can Patents Did Not Satisfy Written Description Requirement
April 1, 2011
The U.S. Court of Appeals for the Federal Circuit on Apr. 1 reversed a summary judgment that patents related to ways of saving metal when seaming beverage can bodies and ends failed to meet the Patent Act’s written description requirement, Crown Packaging Technology Inc. v. Ball Metal Beverage Container Corp., Fed. Cir., No. 2010-1020, 4/1/11).
District Court Finds Patents Invalid on Written Description and Anticipation Grounds.
The district court in this infringement suit granted a summary judgment in favor of defendant Ball Metal Beverage Container Corp. It ruled that two patents (6,935,826 and 6,848,875 sharing a common specification and discussing two ways to save metal when seaming can bodies and can ends were invalid for failing the written description requirement of 35 U.S.C. § 112 and for being anticipated by a Japanese patent application (Toyo) under 35 U.S.C. 102.
Crown Packaging Technology Inc. and Crown Cork and Seal USA Inc. appealed.
Majority Finds Specification Adequate Under Revolution Eyewear.
35 U.S.C. § 112 states:
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 beverage can end is the top portion of the can from which one drinks, and the can body is the portion containing the beverage. The specification teaches improving the reduction of metal usage by increasing the slope of the beverage can end wall (chuck wall) chuck wall and by using a thinner reinforcing bead (the inside groove around the cap top) “narrower than 1.5mm" in radius.
The district court found that Section 112 was not satisfied because 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.
On appeal, Crown relied on the statement in Revolution Eyewear Inc. v. Aspex Eyewear Inc., 563 F.3d 1358 (Fed. Cir. 2009), that "[i]nventors 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 the claim." Crown argued that the specification teaches two separate solutions for improving metal usage: increasing the slope of the chuck wall of the can end and limiting the width of the reinforcing bead. In its view, nothing in the specification requires employment of both methods in all instances.
Crown's asserted claims are not broad genus claims or function claims simply describing the desired result of saving metal, noted Judge Ronald M. Whyte of the U.S. District Court for the Northern District of California, sitting by designation. “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.”
Finding that the written description requirement was met, Whyte stated:
We agree with Crown that the written description supports the asserted claims. Ball contends that Revolution Eyewear does not apply to a specification in which the prior art problems are related to one another. According to Ball, for Revolution Eyewear to apply, a specification must independently present separate solutions to independent problems. Ball misstates our holding in Revolution Eyewear. To the contrary, we specifically held in Revolution Eyewear that it is a "false premise that if the problems addressed by the invention are related, then a claim addressing only one of the problems is invalid for lack of sufficient written description." … Ball attempts to distinguish Revolution Eyewear by arguing that the specification here mandates that the prior art problems (metal usage and risk of damage with a narrower reinforcing bead) must always be solved together. But the specification specifically ties the fracturing and scuffing problems to the narrower reinforcing beads and not the increased angle of the can end wall. … Nowhere does the specification teach that metal savings can only be achieved by increasing the chuck wall angle along with narrowing the reinforcing bead. … Simply put, the specification supports the asserted claims that achieve metal savings by varying the slope of the chuck wall alone.
While the patents teach two independent ways to save metal, the advantages of limiting the chuck to driving outside the reinforcing bead only come into play when one narrows the reinforcing bead. That is when "the chuck bead becomes narrower and more likely to fracture."
Crown's original claims clearly show that the applicants recognized and were claiming an improvement in metal usage by increasing the slope of the chuck wall over that used in the prior art without any additional limitation of narrowing the width of the reinforcing bead. Notably, Crown adds the limitation requiring that there be no "driving contact between said chuck and said can end bead interior surface" in dependent claims 22 and 40 of the '875 patent. … The added limitation would not be needed if the inventors had in mind that in all cases driving would occur outside the reinforcing bead. These claims show, as Ariad recognized many original claims do, that the applicants had in mind the invention as claimed. And while 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. …
Finding error in the district court’s conclusion that the asserted claims violated the written description requirement, the Federal Circuit reversed the invalidity ruling and entered judgment on this point for Crown.
It went on to reverse and remand the summary judgment of invalidity for anticipation, finding that a trial was warranted given conflicting evidence on what exactly is disclosed in the Toyo application.
Judge Dyk: Claims Unsupported by Specification.
Dissenting in part, Dyk questioned the majority’s validity conclusion based on Revolution Eyewear. While that case holds that a claim may address only one of the purposes disclosed in the specification, it “still requires explicit disclosure of the embodiments in the claims,” Dyk stressed.
Quoting Revolution Eyewear with emphasis, he said:
“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.” … Therefore, the claims, whether directed to solving a single problem or multiple problems, must still be grounded in the specification.
Similarly, product claim 14, which depends from claim 13, discloses a can end wall having an increased slope in combination with a wider, prior art bead. Because this combination is a separate invention not disclosed in the specification, claim 14 is also invalid for failure to satisfy the written description.
Since the en banc ruling in Ariad Pharmaceuticals Inc. v. Eli Lilly & Co., 598 F.3d 1336, (Fed. Cir. 2010), is clear that failure to disclose a claimed invention is fatal to a claim’s validity, the summary judgment of invalidity should be affirmed here, Dyk concluded.
Crown was represented by Dale M. Heist of Woodcock Washburn, Philadelphia. Ball was represented by John D. Luken of Dinsmore & Shohl, Cincinnati.