Vas-Cath Inc. v. Mahurkar (901422128)

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
• 10/1/84 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