Although it is possible that a “disclosure of a species may be sufficient written description support for a later claimed genus including that species,” this is not sufficient for the more unpredictable arts. “[T]here are no bright-line rules governing, for example, the number of species that must be disclosed to describe a genus claim, as this number necessarily changes with each invention, and it changes with progress in a field.” Here, the disclosure of peripheral grooves does not adequately demonstrate possession of the entire genus of possible openings.
Background / Facts: The patent being asserted here is directed to an “Intervertebral Implant,” which is a prosthetic device designed to replace a diseased or degenerated disc located between adjacent vertebrae of the human spine. Of particular relevance to the appeal is the construction of the phrase “the third plate including a plurality of openings” to anchor a fiber system. The original disclosure claimed and disclosed a plurality of grooves, but did not describe “openings” generally. The term “openings” was added later during prosecution to specifically capture the accused devices. The parties appear to agree that “grooves” are a species of “opening,” but do not agree that “grooves” constitute an adequate disclosure to claim all openings that may be used in the cover plates to anchor the fiber system.
Issue(s): Whether the written description disclosure of “grooves” reasonably conveyed to those skilled in the art that the inventor had possession of an intervertebral implant that could utilize any sort of opening located anywhere on the cover plates to anchor the fiber system as of the filing date.
Holding(s): No. Although the court acknowledged that the patent’s written description “discloses that the fiber system may be anchored by various means,” the court noted that “[a]ll of these examples employ ‘grooves,’ not slots or openings on the plates.” In the court’s view, the written description “never discloses anything broader than using grooves to anchor the fiber system to the cover plates.” Coupled with strong expert testimony that “the process of moving from peripheral grooves to internal slots is not a simple substitution, but a careful and time-consuming task,” the court let stand the jury’s determination that “there would be significant biomechanical differences between using peripheral grooves and internal slots,” such that the written description requirement is not satisfied across the full breadth of the claim language at issue.