EB: Vas-Cath Inc. v. Mahurkar (1991)

The Situation

• Mahurkar invents new catheter that created less puncture area than those of the prior art.
• Vas-Cath sued Mahurkar claiming his patent is invalid as anticipated under 102 - Mahurkar had (more than one year prior) filed a Canadian patent describing the invention

Discussion

• Time line:
  • US Design Application (1981)
  • Canadian Application (1982) - problem (because 1 year prior to US utility filing)
  • US Utility Application (19984)
• Mahurkar wants the design application filing date to represent his date of invention, but in order for that to happen he must have had adequate "written description" of the patent. Section 112 requires full disclosure - do drawings count? Is the design application good enough to meet requirements of 112?
  • District court says no, design patent with drawings only is not good enough of a "written description" - on summary judgement
  • CAFC says there are issues that need to be tried, so they remanded the summary judgement

• Main concept: type of disclosure is required by 112
• Another concept: Did the US utility patent add "new matter" to the design patent? If so, then that is not allowed.

Declaratory judgement: preemptive decision on whether a device infringes or not (Vas-Cath, the alleged infringer, wants a declaratory judgement that they are not infringing on Mahurkar's patent)

• Mahurkar concedes that if his original US Design Application date (1981) was not honored, his patent would be invalid
• Vas-Cath concedes that the design application drawing allow someone of ordinary skill in the art to understand the invention (but, that does not mean it qualifies under 112 - district court decided otherwise)

Final result: Sometimes drawing are good enough - they have to "reasonably convey" that the invention was possessed by inventor at the time (there is a quote somewhere in the text), and enable a person of ordinary skill the art to understand the invention

Disclosures:

• Claim supporting
• Claim anticipating
  • There is a difference in what each of these types of disclosure involve - see court case for detailed discussion

"The description must clearly allow persons of ordinary skill in the art to recognize that they invented it"