Federal Circuit Affirms That D Three Enterprises Priority Patent Filing Does Not Support Genus Claims
A Priority Patent Application is Only as Good as the Claim It Supports
- Federal Circuit affirms district court’s summary judgment regarding effective filing dates and invalidity in view of intervening prior art (largely, the infringer’s own product sales)
- To support genus claims there must be disclosure of the genus; otherwise only the disclosed species will be supported
In D Three Enterprises, LLC v. SunModo Corp., decided on May 21, 2018, the Federal Circuit affirmed the district court’s summary judgment regarding effective patent filing dates and invalidity in view of intervening prior art, in this case largely the infringer’s own product sales.
The patents in suit relate generally to roof mount assemblies, primarily for solar panels. The question presented was whether D Three’s patent applications (particularly the 2009 application) described inventions at least equal in breadth to the asserted claims. If they did not, the asserted claims were not entitled to the earlier effective filing dates. 35 U.S.C. Section 112(a).
The asserted patent claims fell into two categories: those that do not recite a soft washer (as part of the assembly), and those that do. The former category constituted all but two of the asserted claims; the latter constituted the two exceptions. Op. 4-5.
As to the asserted claims that do not recite a washer, all but one of the assemblies disclosed in the 2009 application had a soft washer. The 2009 application disclosed only one invention that lacked a washer: the assembly depicted in Figures 27-33 and 41. Figures 27–33 and 41 of the 2009 application depict an assembly in which an attachment bracket 1700 is bolted directly to the base bracket through the flashing 1902 without a washer (Figures 30, 41). Op. 9.
The problem D Three faced was that in all of the washerless embodiments, the washerless assembly consistently had one type of attachment bracket: no. 1700. The applications consistently defined bracket 1700 as having “W shaped prongs 1701 and face seat 1702 [that] can hold a support post 100 in a conventional male/female interaction when needed.” Id.
There was no teaching that the washerless assembly could be used with other than the W-pronged attachment bracket 1700. The Federal Circuit agreed with the district court that “washerless assemblies using attachments other than attachment bracket 1700, which has “W[-] shaped prongs,” J.A. 2223, are not adequately disclosed, because the 2009 Application in no way contemplates the use of other types or never uses the term washerless, or describes any other types of attachment brackets that could be used in the claimed roof mount assemblies.” Op. 13.
Because the washerless assembly disclosed in the 2009 application was limited to using the W-pronged attachment bracket with face seat defined as attachment bracket 1700 – and the asserted “washerless” claims were not limited to such a bracket – the asserted washerless claims were not supported by the 2009 application and so were not entitled to the 2009 effective filing date. Op. 13.
The asserted claims that do recite a washer were also denied the earlier effective filing date since the 2009 application disclosed a soft washer only above the flashing. While the later applications disclosed the washer either above the flashing or both above and below the flashing, none of the applications disclosed an assembly in which the soft washer was only under the flashing. Op. 16, 17.
Since there was no dispute that without the benefit of the 2009 Application’s filing date the patents-in-suit would be invalid due to intervening prior art, the Federal Circuit affirmed the district court’s summary judgment of invalidity in view of intervening prior art. Op. 5, 18.
The take-away from D Three Enterprises v. SunModo is that for a priority patent filing to support genus claims there must be disclosure of the genus; otherwise only the disclosed species will be supported. D Three’s claim to priority failed because the priority patent filing disclosed a washerless assembly only with the W-pronged attachment bracket (as to the washerless claims) and a washer above the flashing (as to the washer claims). It did not disclose the genus of using the washerless assembly with any attachment bracket (as to the washerless claims) or a washer below, above, or below or above the flashing (as to the washer claims).
As another example, see Tronzo v. Biomet, Inc. 156 F.3d 1154 at 1158–59 (Fed. Cir. 1998) where the Federal Circuit held that a claim that was generic as to shape of hip cup was not supported by parent’s disclosure of a hip cup disclosed as a trapezoid, truncated cone, or conical. In short, a priority application is only as good as the claim it supports so provide more examples in your patent filing to provide more support for broader claiming.