The Federal Circuit provided additional guidance for patent drafting in several recent decisions.
Written Description
In ICU Medical v. Alaris Medical Systems, the court held that certain claims were invalid for failure to comply with the written description requirement. The patentee had filed its original application relating to valves in medical IV setups in December 1991. The description and claims in this application referred to valves that included “spikes.” In 2001, the applicant added claims to valves that did not require spikes (which the court improperly classified as “spikeless” claims; “spikeless” was not a limitation of the claims, they simply didn’t require “spikes”).
Presumably the court was influenced by the fact that these claims were only added after the accused infringer’s products were in the marketplace and the patent owner wrote the claims to specifically cover the products that did not include spikes. The court held that, without the spike limitations, the claims were invalid as failing to comply with the written description requirement. None of the embodiments disclosed in the patent’s specification described a valve that did not include a spike.
Based on this disclosure, a person of skill in the art would not understand the inventor of the [] patents to have invented a spikeless medical valve.
Marking
In Crown Packaging Technology v. Rexam Beverage Can, the patentee did not require its licensee to mark the patent number on the patented products. Under 35 U.S.C. § 287(a), this normally this means that the patentee is not entitled to infringement damages prior to the infringer receiving notice of the patent.
Because a method is not an article and technically cannot be marked, the Federal Circuit held in Hanson v. Alpine Valley Ski Area, 718 F.2d 1075 (1983), that the marking requirement does not apply when only method claims are asserted against an infringer. The court reaffirmed that holding in Crown Packaging.
Summary
These cases give a couple of lessons on patent drafting and claim drafting in particular. First, include as many embodiments of varying scope in the application as possible. Although not always foreseeable, this should include each claim limitation for which broader protection could be acquired. If the patentee in ICU Medical had included disclosure of valves that did not include spikes, his claims that did not include the spike limitation might have been saved.
Obviously, patent owners and their licensees should comply with § 287(a)’s marking requirement. When preparing an application, however, include article and method claims in the application if at all possible. Not all inventions lend themselves to this type of claim, but most do.
