Reversing a grant of summary judgment holding that patents covering claims to a beverage can and a method for making a beverage can were invalid for failure to satisfy the written description requirement and being anticipated, the U.S. Court of Appeals for the Federal Circuit concluded that under the “problem solution” analysis of Revolution Eyeware, the patent in issue satisfied the written descriptive requirement by providing multiple solutions to the stated problem and that a genuine issue of material fact existed as to whether a prior art reference inherently disclosed elements of the claims. Crown Packaging Tech., Inc. v. Ball Metal Container Corp., Case No. 10-1020 (Fed. Cir. April 1, 2011) (Whyte, J., N.D. Cal., sitting by designation) (Dyk, J, concurring-in-part and dissenting-in-part).
Crown Packaging sued Ball Metal Container asserting infringement of two patents sharing a common specification that related to beverage cans that use less metal, based on the connection of the can end to the can body. The district court granted Ball a summary judgment ruling of invalidity, finding that the patents in suit failed to satisfy the written description requirement and were anticipated under principles of inherency. The district court found that the asserted claims cover driving a chuck either inside or outside of the reinforcing bead of the lid, but the specification only supports driving a chuck outside of the reinforcing bead at the end of the can, thus failing to satisfy the written description requirement. Further, the district court found that a published Japanese patent application anticipated the asserted claims, with at least one claim limitation being inherently disclosed. Crown Packaging appealed.
The Federal Circuit began the analysis by reviewing the written description requirement. Citing Ariad Pharms., Inc. v. Eli Lilly & Co. (see IP Update, Vol. 12, Nos. 5 and 9) the Court noted that the test for the written description requirement is “whether the disclosure clearly ‘allow[s] persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Put another way, the disclosure must convey that “the inventor has possession of the claimed subject matter as of the filing date.” Possession is shown by the specification disclosing what is claimed. The Court noted that the originally filed claims are part of the specification and often satisfy the written description requirement.
The Court, distinguishing the enablement requirement from written description, agreed with Crown Packaging that the specification taught two different ways to address the problem of reducing metal usage in beverage cans and that the specification does not require the use of both methods in all instances. Since the patents in suit teach two separate ways to save metal and the original claims show that Crown Packaging recognized that two independent ways to save metal were disclosed in the patent, the written description requirement was satisfied.
Turning to the issue of anticipation, the Federal Circuit found that the experts’ reports materially differed regarding the disclosure of the prior art Japanese patent application, thus summary judgment was inappropriate in this case, as a genuine issue of material fact existed.
Judge Dyk dissented in part, writing that the patents should be invalid for failing to satisfy the written description requirement. Judge Dyk found that specification did not teach the combination of elements found in the claims, and thus, the patents should be invalidated. Judge Dyk wrote that Revolution Eyewear v. Aspex Eyewear requires “explicit disclosure of the embodiments in the claims.” In his view, “[t]he 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.”