Director Provides Insight On Interplay Between Written Description And Enablement

by | Apr 5, 2023 | 325(d) issues, PGR, Trial Institution

By Levent Herguner and Matt Johnson –

USPTO Director Kathi Vidal recently vacated a PTAB decision denying institution of a post-grant review and remanded the case for further proceedings.  The petitioner challenged claims 1–27 of the ’274 patent under 35 U.S.C. § 112(a) for lacking written description and enablement, and under 35 U.S.C. § 103 as obvious in view of prior art. The Board denied institution, exercising its discretion under 35 U.S.C. § 325(d).

Director Vidal vacated the PTAB’s decision, emphasizing that a finding of adequate written description during examination cannot, on its own, constitute the same or substantially the same arguments under Advanced Bionics as a challenge for lack of enablement.  Director Vidal noted that written description and enablement requirements involve different considerations and require separate inquiries.  Furthermore, Director Vidal pointed out that the Board must provide a rationale in sufficient detail to inform the parties and the public and allow for review if it finds that a Petitioner’s enablement challenge constitutes the same or substantially the same arguments previously presented to the Office on written description.

Director Vidal ordered the PTAB to issue a new decision on institution within one month, focusing on whether § 325(d) applies to enablement based on the written description arguments presented during the original prosecution.  The PTAB must therefore evaluate whether the Petitioner carried its burden to show that at least one of the challenged claims is unpatentable based on lack of enablement.

Takeaways:

For parties involved in post-grant proceedings, this case highlights the importance of differentiating between written description and enablement challenges and the need for detailed rationales when the PTAB exercises its discretion under § 325(d).  Moreover, this case underscores the value in crafting well-supported and distinct arguments for both written description and enablement challenges in petitions.

Director Vidal’s decision also serves as a reminder that the PTAB’s discretion under § 325(d) is not unlimited, and parties must be provided with a clear rationale for the Board’s findings, particularly when dealing with distinct patentability requirements.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.