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Atlantic Research Marketing Systems, Inc. v. Stephen P. Troy Jr. and Troy Industries, Inc.

Summarized by: 

Date Filed: 10-06-2011
Case #: 2011-1002, 2011-1003
Prost, Mayer, and O’Malley
Full Text Opinion: http://www.leagle.com/xmlResult.aspx?xmldoc=In%20FCO%2020111006171.xml&docbase=CSLWAR3-2007-CURR

Patents: A patent must 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 make and use the same” and it must “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”

Atlantic Research Marketing Systems, Inc. (“Atlantic”) appealed from the district court’s decision holding claims 31-36 of U.S. Reissue Patent No. 39,465 invalid for failing to meet the written description and best mode requirements. The Court of Appeals found that claims 31-36 failed to satisfy the written description requirement and chose not to discuss the best mode requirement as the patent was invalid under the written description requirement. In order to satisfy the written description requirement of 35 U.S.C. § 112 the patent must 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 make and use the same” and it must “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Looking at the claims in question the Court of Appeals determined that the claims claimed a handguard for a gun that was supported solely by clamping to the barrel nut, but the written description of the patent only described a handguard that was partially supported by the barrel nut. The Court of Appeals rejected Atlantic’s argument that the claims were claiming only partial support due to the contrasting language from other claims that clearly claimed partial support. Although the Court of Appeals AFFIRMED the invalidity of the claims, the Court of Appeals REVERSED part of the district court’s holding on a separate challenge to a jury taint issue.