An Examiner S Allowance Does Not Create an Especially Weighty Presumption of Written Description Support

Written by:Daniel Kiang and Daniel M. Mittelstein

MONDIS TECHNOLOGY LTD., HITACHI MAXELL, LTD., NKA MAXELL HOLDINGS, LTD., MAXELL, LTD.  v.  LG ELECTRONICS INC., LG ELECTRONICS USA, INC.

Before Taranto, Clevenger, and Hughes.  Appeal from the United States District Court for the District of New Jersey.

Summary: The Federal Circuit reversed a jury verdict of infringement because a claim limitation amended during prosecution lacked written description support.

Mondis Technology Ltd. sued LG Electronics Inc. for infringement of claims 14 and 15 of Mondis’s patent directed to a system for controlling a specific display unit based on an identification number stored in the display unit’s memory. During prosecution, claim 14 was amended to change reciting “an identification number for identifying said display unit” to “an identification number for identifying at least a type of said display unit.” At trial, LG argued the claims were invalid because, while the specification supported the original claim language, it did not support identifying a type of said display unit. Although Mondis did not present a rebuttal case on written description during trial, the jury found the claims not invalid and infringed. After the district court denied LG’s motion for judgment as a matter of law on written description, LG appealed.

The Federal Circuit reversed, holding that no reasonable jury could find written-description support for the “type of said display unit” limitation. Mondis argued because the examiner allowed the claim amendment without objection, it was entitled to an “especially weighty presumption of correctness.” But the Federal Circuit rejected that argument, explaining that an examiner’s allowance of claims by itself does not provide substantial evidence that the claims comply with the requirements of § 112. The Federal Circuit found that the claim limitation was unsupported by the application, which consistently described only identifiers tied to specific devices and never to a type of device. Moreover, Mondis’s expert testified that the specification “[did] not expressly recite an identification number for identifying a type of display unit” and Mondis never redirected its expert on this testimony. Thus, there was no evidence in the record that would allow a reasonable jury to determine that a person of ordinary skill in the art would have understood that the patent disclosed the “number for identifying a type” limitation.

Editor: Sean Murray