Brief Fact Summary. Mahurkar’s (Defendant) original application including drawings of his catheter invention, and he later attempted to attach written descriptions.
Synopsis of Rule of Law. Drawings may be adequate to provide the written description of the invention.
In reviewing a district court's grant of summary judgment, we must make an independent determination as to whether the standards for summary judgment have been met.View Full Point of Law
Are drawings adequate to provide the written description of the invention?
Held. (Rich, J.)Â Yes.Â Drawings may be adequate to provide the written description of the invention.Â Compliance of a written description is a question of fact and is to be reviewed under the clearly incorrect standard.Â The purpose is broader than to explain only how to “make and use.”Â With reasonable clarity, the applicant must also get across to those skilled in the art, that as of the filing date, he or she was in possession of the invention.Â The claim before the court, and what Defendant eventually patented, was exactly as shown in the picture.Â More troubling is the written explanations that may not inevitably follow from the diagrams.Â Defendant provided expert testimony that one skilled in the arts would understand that the catheter must have the range specified in the claims, but later patents refuted this, as observed by the district court.Â The district court must also look solely to one skilled in the art on the date of filing, not afterwards.Â Therefore, the second issue must be resolved.Â Reversed and remanded.
Discussion. On remand, the court found that the drawings showed Defendant was in possession of the invention at the date of filing.Â Judge Easterbrook observed that the utility applications only lay out what the drawings show, and, if anything, they explain the features of the drawing that are important, but do not add anything.Â See In re Mahurkar Patent Litigation, 831 F. Supp. 1354 (N.D. Ill. 1993).