Vas-Cath Inc. v. Mahurkar (901422128)

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Read for 4/11/11

Reading Notes

  • Decided by the CAFC in 1991
  • District Court granted partial summary judgment to Vas-Cath
    • Ruled Mahurkar's two patents invalid for one reason of new matter
  • Shouldn't have been allowed to use the original filing court
    • Design application did not provide a written description of the invention
  • CAFC reverses with respect to all claims
  • Filed MArch 8, 1982
    • Abandoned 11/84
    • Catheter
  • Also issued a Canadian Industrial Design in 1982 for the same device
  • 10/1/81 he filed the first of two utility patents at issue here
    • Same drawings as original
    • Claimed the original filing date as a continuation
    • Issues in 86 and 87
  • Vas-Cath arguing they were not valid because of a lack of written description
    • Question was whether the drawings alone meet the written description requirement of 112
      • Only then would antedate the Canadian patent
  • Written descriptions separate from enablement
  • Drawings alone may be sufficient
    • Doesn't matter where the disclosure is found
    • Usually utility drawings are more detailed but in this case they were nearly identical to the original design ones
  • District Court said the drawings needed to describe what is novel and important but this is not true
    • The combinations is what is claimed
    • Required too much from the drawings
  • On remand the District Court should analyze if the written description has been met as to the subject matter of each claim

New Matter

  • Written description requirement
    • "Full, clear, concise and exact terms to enable any person skilled in the art to which it pertains...to make and use the same"
  • Most often matters when claims not presented at filing time are presented thereafter
  • Have to determine if the original claims provide "adequate" support for the claims at issue
  • Written description was part of the statutes before claims were required
  • Two original objectives
    • Enable artisans to use
    • Put it in the public to determine common use prior
    • Definiteness and description requirements
    • Possible to enable without describing
  • Description allows the filing date to be held as the date of invention
  • Standard
    • "Although the applicant does not have to describe exactly the subject matter claimed...the description must clearly allow persons of ordinary skill...to recognize that he or she invented what is claimed"
    • Test is if it conveys that the inventor had possession at that time of the later claimed subject matter