The Written Description Doctrine, A Claim Construction Doctrine: Conflicting Claim Support Determinations Under Phillips and Ariad

Abstract

The Federal Circuit’s recent Ariad decision on written description under 35 U.S.C.§ 112, ¶ 1 has the potential to conflict with the panel’s en banc decision on claim construction in Phillips v. AWH Corp. According to the Federal Circuit, a claim, though properly construed in light of the specification and prosecution history, may nevertheless be held invalid based only on the specification. If claims are construed so that their constructions find some support in the written record, then it seems unsound that a properly construed claim be invalidated for lack of written description. Although having only the minority view in Ariad, Judge Rader properly acknowledges that “the written description invalidity doctrine is really a claim construction invalidity doctrine.” To remedy the issues between these two doctrines, one proposal is to resolve claim construction and written description based on the same evidence, inter alia, the specification and prosecution history. Another proposal may require that the issue of written description be resolved as a matter of law instead of as a matter of fact.