United States Court of Appeals for the Federal Circuit
05-1062
LIZARDTECH, INC.,
Plaintiff-Appellant,
v.
EARTH RESOURCE MAPPING, INC. and
EARTH RESOURCE MAPPING PTY LTD. (now Earth Resource Mapping Ltd.),
Defendants-Appellees.
Philip P. Mann, Mann Law Group, of Seattle, Washington, argued for plaintiff-
appellant. Of counsel on the brief were Robert J. Carlson and Kevan L. Morgan,
Christensen O’Connor Johnson & Kindness PLLC, of Seattle, Washington.
Stewart M. Brown, DLA Piper Rudnick Gray Cary US LLP, of San Diego,
California, argued for defendants-appellees. With him on the brief was Richard T.
Mulloy.
Appealed from: United States District Court for the Western District of Washington
Judge John C. Coughenour
REVISED: January 5, 2006
United States Court of Appeals for the Federal Circuit
05-1062
LIZARDTECH, INC.,
Plaintiff-Appellant,
and
REGENTS OF THE UNIVERSITY OF CALIFORNIA,
Plaintiff,
v.
EARTH RESOURCE MAPPING, INC. and
EARTH RESOURCE MAPPING PTY LTD. (now Earth Resource Mapping Ltd.),
Defendants-Appellees.
ON PETITION FOR REHEARING EN BANC
Before MICHEL, Chief Judge, NEWMAN, MAYER, LOURIE, CLEVENGER,
RADER, SCHALL, BRYSON, GAJARSA, LINN, DYK, and PROST, Circuit
Judges.
ORDER
A petition for rehearing en banc was filed by the Appellant, and a
response thereto was invited by the court and filed by the Appellees. The matter
was first referred as a petition for rehearing to the panel that heard the appeal,
and thereafter the petition for rehearing en banc and response were referred to
the circuit judges who are authorized to request a poll whether to rehear the
appeal en banc. A poll was requested, taken, and failed.
Upon consideration thereof,
IT IS ORDERED THAT:
(1) The petition for rehearing en banc is denied.
(2) The mandate of the court will issue on January 12, 2006.
LOURIE, Circuit Judge, with whom MICHEL, Chief Judge, and NEWMAN,
Circuit Judge, join, concurs in a separate opinion.
RADER, Circuit Judge, with whom GAJARSA, Circuit Judge, joins,
dissents in a separate opinion.
LINN, Circuit Judge, dissents.
FOR THE COURT
_Jan 5, 2006____ _s/Jan Horbaly___
Date Jan Horbaly
Clerk
cc: Philip P. Mann, Esq.
Stewart M. Brown, Esq.
05-1062 2
United States Court of Appeals for the Federal Circuit
05-1062
LIZARDTECH, INC.,
Plaintiff-Appellant,
and
REGENTS OF THE UNIVERSITY OF CALIFORNIA,
Plaintiff,
v.
EARTH RESOURCE MAPPING, INC. and
EARTH RESOURCE MAPPING PTY LTD. (now Earth Resource Mapping Ltd.),
Defendants-Appellees.
LOURIE, Circuit Judge, concurring, with whom MICHEL, Chief Judge, and NEWMAN,
Circuit Judge, join.
I concur in the decision of the court not to rehear this case en banc.
Our case law has been quite consistent in holding that the patent law requires
that a patent contain a written description of a claimed invention independent of the
requirements to enable one skilled in the art to make and use the invention. See e.g.,
Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1071 n.17 (Fed. Cir. 2005)
(stating that the “written description is distinct from the enablement requirement”);
Capon v. Eshhar, 418 F.3d 1349, 1360 (Fed. Cir. 2005) (“although the legal criteria of
enablement and written description are related and are often met by the same
disclosure, they serve discrete legal requirements”); Chiron Corp. v. Genentech, Inc.,
363 F.3d 1247, 1253 (Fed. Cir. 2004); Univ. of Rochester v. G.D. Searle & Co., Inc.,
358 F.3d 916, 920 (Fed. Cir. 2004); Amgen Inc. v. Hoechst Marion Roussel, Inc., 314
F.3d 1313, 1330 (Fed. Cir. 2003); Enzo v. Biochem Inc. v. Gen-Probe, Inc., 323 F.3d
956, 963 (Fed. Cir. 2002); Regents of the Univ. of California v. Eli Lilly & Co., 119 F.3d
1559 (Fed. Cir. 1997); In re Ruschig, 379 F.3d 990 (C.C.P.A. 1967). That requirement is
supported by the statute, policy, and practice.
The statute clearly sets forth that “[t]he specification shall contain a written
description of the invention, and of the manner and process of making and using it, in
such full, clear, concise, and exact terms as to enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to make and use the same,
and shall set forth the best mode contemplated by the inventor of carrying out his
invention.” 35 U.S.C. § 112 (2000)) (emphasis added). Both a written description and a
disclosure of how to make and use the invention, as well as the best mode of carrying it
out, are required by the statute.
The policy of the law also supports that interpretation. The whole purpose of a
patent specification is to disclose one's invention to the public. It is the quid pro quo for
the grant of the period of exclusivity. The need to tell the public what the invention is, in
addition to how to make and use it, is self-evident. One should not be able to obtain a
patent on what one has not disclosed to the public.
Finally, patent practitioners know that the first substantive portion of a patent
specification (other than a brief summary and background) is a disclosure of what the
claimed invention is. No one writes a patent application by beginning with statements
like “I make my invention as follows”” or “I use my invention in the following manner." A
patent specification always begins with a statement like “My invention consists of the
05-1062 2
following," or its equivalent. Then there follows a fuller written description of what the
invention is, whether it is a machine, an electronic device, a chemical compound (or,
more usually, a group of compounds), or a genetic sequence (or sequences). Only then
does one find material relating to enablement, telling how to make and use the
invention.
Whatever inconsistencies may exist in the application of the law lie in the
different fact situations with which the courts are faced. Compliance with the written
description requirement has been held to be a question of fact, so what constitutes an
adequate written description depends on what is claimed and what is described.
And, of course, claims may vary from the specification because they are usually
amended during prosecution. However, in whatever form the claims are finally issued,
they must be interpreted, in light of the written description, but not beyond it, because
otherwise they would be interpreted to cover inventions or aspects of an invention that
have not been disclosed. Claims are not necessarily limited to preferred embodiments,
but, if there are no other embodiments, and no other disclosure, then they may be so
limited. One does not receive entitlement to a period of exclusivity for what one has not
disclosed to the public. (I do not here delve into problems of genus-species disclosure,
as that is a more complex topic having its own subtleties.) But merely calling an
embodiment "preferred," when there are no others, does not entitle one to claims
broader than the disclosure.
It is said that the written description requirement is merely a means of "policing
new matter violations." However, there is a separate new matter provision in the statute
(35 U.S.C. § 132), and that provision is subsidiary to the basic requirement set forth in
05-1062 3
Section 112 to disclose one's invention. That statutory written description requirement
is basic to the patent system and it is in no way limited to "policing new matter
violations" or resolving priority disputes.
In the final analysis, the law is clear and consistent, and this court has at least
twice declined to hear a written description case en banc. See Enzo Biochem, Inc. v.
Gen-Probe, Inc., 323 F.3d 956, 970 (Fed. Cir. 2002); Univ. of Rochester v. G.D. Searle
& Co., Inc., 375 F.3d 1303 (Fed. Cir. 2004). Whether or not there may have been votes
to hear such a case en banc for the purpose of having an en banc holding on the issue,
rather than just a line of panel opinions, consistent though they may be, there have
been very few outright votes to go en banc to reverse our holdings. Thus, there is no
reason for our court to hear this case en banc, and I concur in the court's decision to
decline to do so.
05-1062 4
United States Court of Appeals for the Federal Circuit
05-1062
LIZARDTECH, INC.,
Plaintiff-Appellant,
and
REGENTS OF THE UNIVERSITY OF CALIFORNIA,
Plaintiff,
v.
EARTH RESOURCE MAPPING, INC., and
EARTH RESOURCE MAPPING PTY LTD. (now Earth Resource Mapping Ltd.),
Defendants-Appellees.
RADER, Circuit Judge, with whom GAJARSA, Circuit Judge, joins, dissenting from the
order denying rehearing en banc.
This court’s written description jurisprudence has become opaque to the point of
obscuring other areas of this court’s law. For example, “[t]wo cases whose juxtaposition
presents a puzzle” are Lizardtech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336
(Fed. Cir. 2005) and JVW Enterprises, Inc. v. Interact Accessories, 424 F.3d 1324 (Fed.
Cir. 2005). See John L. Rogitz, CAFC Happenings, INTELLECTUAL PROPERTY TODAY,
November, 2005, at 32. Despite their similarities, the outcomes in Lizardtech and JVW
are strikingly different. In Lizardtech, this court invalidates claims that are broader than
the disclosed embodiments because “[t]here is no evidence that the specification
contemplates a more generic way” of performing the claimed invention. Lizardtech, 424
F.3d at 1344. Meanwhile, in JVW, this court determines that the claims are properly
construed as broader than the disclosed embodiments because “the patentee did not
intend for the claims and the embodiments disclosed in the specification to be
coextensive.” JVW, 424 F.3d at 1335. In both cases, the claims encompass more than
the specification expressly describes. In Lizardtech, this court says that a claim scope
in excess of the specification’s embodiments invalidates the claim. In JVM, this court
says that a claim scope in excess of the specification’s embodiments grants a broader
range of infringement. The facts are very similar, the results are not.
To expand on the dichotomy in this recent case law, both Lizardtech and JVW
confront an issue common to many patent disputes: claims that are broader than the
disclosed embodiments. See Lizardtech, 424 F.3d at 1344; JVW, 424 F.3d at 1324.
Neither opinion involves biotechnology or chemistry, Lizardtech involves image
compression and JVW involves video game controllers. Neither opinion discusses the
issue of complexity or uncertainty in the art, a frequent characteristic of claims
invalidated on written description grounds. See Capon v. Eshhar, 418 F.3d 1349, 1358
(Fed. Cir. 2005) (“It is well recognized that in the ‘unpredictable’ fields of science, it is
appropriate to recognize the variability in the science in determining the scope of the
coverage to which the inventor is entitled.”) (citing Enzo Biochem, Inc. v. Gen-Probe,
Inc., 296 F.3d 1316, 1327-28 (Fed. Cir. 2002); Regents of the Univ. of Cal. v. Eli Lilly &
Co., 119 F.3d 1559, 1569 (Fed. Cir. 1997), In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir.
1989); In re Smith, 458 F.2d 1389, 1394-95 (CCPA 1972); and In re Grimme, 274 F.2d
949, 952 (CCPA 1960)). Because those similarities stand in stark contrast to the
2
disparate outcomes in Lizardtech and JVW, these next-door neighbors in West’s
Federal Reporter must leave practitioners in a quandary.
On the one hand, according to Lizardtech, claims should not be broader than the
disclosed embodiments unless the specification suggests the invention is broader than
those embodiments. Logically, that creates a presumption: claims must be
commensurate in scope with the preferred embodiments absent language suggesting
otherwise. On the other hand, according to JVW, claims should not be narrowed to the
preferred embodiments unless the specification suggests the inventor intended such
narrow coverage. Logically, that creates a different presumption: claims need not be
commensurate in scope with the preferred embodiments absent language suggesting
otherwise. Of course, the unsatisfying solution to the puzzle is simple: while JVW
considered principles of claim construction in light of this court’s recent en banc
clarification of claim construction, see JVW, 424 F.3d at 1335 (citing Phillips v. AWH
Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc)), Lizardtech dealt with this
court’s evolving written description doctrine.1
1
Before engaging in its written description analysis, Lizardtech also construed the
claims at issue. See Lizardtech, 424 F.3d at 1343. Specifically, this court construed
claim 21 as limited to seamless discrete wavelet transformation (DWT) despite the
absence of the term “seamless” in that claim. Id. at 1344. The court then used claim
21, as construed, as a baseline for analyzing written description. That written
description analysis focused on the breadth of claim 21, which is not limited to a
seamless DWT with its step of “maintain[ing] updated sums,” in light of Lizardtech’s
specification, which includes only one method of seamless DWT, i.e., one that includes
maintaining updated sums. Id.
Of course, this analysis only proves that the written description invalidity doctrine
is really a claim construction invalidity doctrine. If the claims are construed as confined
to the embodiments in the specification, written description invalidity does not come into
play. If the claims, on the other hand, are construed to embrace more than the
specification, this court (on only some occasions and without a clear standard to
determine those occasions in advance) will invalidate.
3
As cited by JVW, Phillips clarified claim construction, and in the process
discussed the situation of specific embodiments coupled with broad claims:
[A]lthough the specification often describes very specific
embodiments of the invention, we have repeatedly warned
against confining the claims to those embodiments. See,
e.g., Nazomi Communications, Inc. v. ARM Holdings, PLC,
403 F.3d 1364, 1369 (Fed. Cir. 2005) (claims may embrace
"different subject matter than is illustrated in the specific
embodiments in the specification"); [Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 906-08 (Fed. Cir. 2004)];
[Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327
(Fed. Cir. 2002)]; SRI Int'l v. Matsushita Elec. Corp. of Am.,
775 F.2d 1107, 1121 (Fed. Cir. 1985). In particular, we have
expressly rejected the contention that if a patent describes
only a single embodiment, the claims of the patent must be
construed as being limited to that embodiment. [Gemstar-
TV Guide v. Int’l Trade Comm’n, 383 F.3d 1352, 1366 (Fed.
Cir. 2004)] . . . .
To avoid importing limitations from the specification
into the claims, it is important to keep in mind that the
purposes of the specification are to teach and enable those
of skill in the art to make and use the invention and to
provide a best mode for doing so. See Spectra-Physics, Inc.
v. Coherent, Inc., 827 F.2d 1524, 1533 (Fed. Cir. 1987).
Indeed, in Phillips itself, this court gave the broad claim term “baffle” a meaning beyond
the narrower bullet-deflecting embodiments in the specification. Phillips, 415 F.3d at
1326-27.
Phillips thus underscored that claim language governs and may exceed the
scope of the specification’s preferred embodiments. With that recent en banc rule in
place, the written description analysis of Lizardtech is troubling, if not inexplicable.
Patent owners and practitioners must struggle to resolve the tension between Phillips
and cases like Lizardtech.
I.
4
Even absent the tension with Phillips, this court provides no neutral standard of
application for its evolving written description doctrine. The ostensible standard for an
adequate written description is that the specification must show “possession” of the
claimed invention. Before 1997, the written description doctrine served only its original
and important purpose of policing new matter violations. Enzo Biochem, Inc. v. Gen-
Probe Inc., 323 F.3d 956, 977-79 (Fed. Cir. 2002) (Rader, J., dissenting from denial of
petition for rehearing en banc and explaining origins of the written description
requirement). At that time, the “possession” test suggested both a methodology and
standard for its application. In re Ruschig, 379 F.2d 990, 995-96 (CCPA 1967). Under
the traditional written description doctrine, which was just another name for the new
matter doctrine, In re Rasmussen, 650 F.2d 1212, 1214-15 (CCPA 1981), the
“possession” test was easily applied. It compared an original filing with a later
amendment. The “possession” test also provided a standard for this comparison,
namely “if the original filing ‘supported’ or showed possession of the new matter at the
time of the original filing” then no infraction had occurred. Under the traditional written
description doctrine, possession was a real test with a real standard for compliance.
While this court purports to still apply its “possession” test, Lizardtech, 424 F.3d
at 1345, it does so in a way not contemplated by the original test, i.e., by comparing
separate parts of the same original disclosure. Lizardtech, 424 F.3d at 1344. The
original test does not work in the new setting because, of course, every specification
describes and defines the same thing, a single invention. See 35 U.S.C. § 112 ¶¶ 1, 2
(“The specification shall contain a written description of the invention” and “conclude
with one or more claims particularly pointing out and distinctly claiming the subject
5
matter which the applicant regards as his invention.”) (emphasis added); In re
Goodman, 11 F.3d 1046, 1052 (Fed. Cir. 1993) (“[Under 35 U.S.C. § 101,] an inventor
is entitled to a single patent for an invention.”). Thus, by definition, both parts of the
same specification show possession of the same thing, the invention. For that reason,
this court’s predecessor explained in In re Gardner that the traditional written description
doctrine could be satisfied by any part of the original disclosure – the claims or the rest
of the specification. 475 F.2d 1389, 1391 (CCPA 1973). In 1997, when this court
strayed from the statute and modified the written description requirement, it created the
present confusion.
In Regents of the University of California v. Eli Lilly & Company, 119 F.3d 1559
(Fed. Cir. 1997), this court purported to provide a “bright line” standard for its modified
written description doctrine. The bright line test bristled with the language and baggage
of chemical cases: “An adequate written description of a DNA . . . ‘requires a precise
definition, such as by structure, formula, chemical name, or physical properties.’” Lilly,
at 1566. That bright line test, however, hit a brick wall in the Enzo case. Enzo
Biochem, Inc. v. Gen-Probe, Inc., 285 F.3d 1010 (Fed. Cir. 2002). The specification of
the DNA invention in Enzo, of course, did not feature a “structure, formula, chemical
name, or [description of] physical properties.” Instead, the inventor had merely
deposited a sample of the invention for inspection. Therefore the original panel of this
court invalidated the patent under the Lilly standard for written description validity. Id. at
1023-24. A few months later, in response to an outcry in the patent bar, that panel
withdrew its opinion and scuttled the “bright line” Lilly test for written description
invalidity. 323 F.3d 956 (Fed. Cir. 2002).
6
Since then, this court has searched for a proper standard for its revised and
evolving written description doctrine. For instance, the recent Capon case illustrates the
impossibility of finding a standard that measures the sufficiency of the disclosure in a
specification by comparing two parts of that same specification. Capon v. Eshhar, 418
F.3d 1349 (Fed. Cir. 2005). In Capon, the United States Patent and Trademark Office’s
(“the USPTO’s”) Board of Patent Appeals and Interferences (the Board) rejected a claim
to a chimeric DNA invention under the bright line Lilly test. In the words of the Board,
“the parties’ claim is not described in their specifications . . . by reference to . . . the
structure, formula, chemical name, or physical properties of many protein domains.”
Capon, 418 F.3d at 1355. As in Enzo, this court adopted the questionable Lilly doctrine
but rejected its equally questionable test. Capon, 418 F.3d at 1357-59 In explaining its
ruling, this court opined:
The descriptive text needed to meet [the evolving written
description requirement] varies with the nature and scope of
the invention at issue, and with the scientific and technologic
knowledge already in existence. The law must be applied to
each invention that enters the patent process, for each
patented advance is novel in relation to the state of the
science . . . [T]he law . . . will vary with differences in the
state of the knowledge in the field and differences in the
predictability of the science.
Capon, 418 F.3d at 1357. That passage needs translation. In brief, it says: “Bring your
specifications to the Federal Circuit and we will tell you if they contain sufficient
descriptions.” Like the rest of the Capon opinion, that passage does not articulate a
standard, let alone a neutral standard applicable to all forms of technology, but instead
recites some generalities that apply to all inventions and all disclosures (“varies with the
nature and scope of the invention,” “each patented invention is novel,” “will vary with
7
differences in the state of knowledge in the field,” and so forth). In Capon, the Federal
Circuit went on to “clarify”:
The “written description” requirement states that the
patentee must describe the invention; it does not state that
every invention must be described in the same way . . . .
It is well recognized that in the “unpredictable” fields
of science, it is appropriate to recognize the variability in the
science in determining the scope of the coverage to which
the inventor is entitled.
Capon, 418 F.3d at 1358. Once again, those explanations, majestic in their generality,
explain nothing and certainly supply no standard for drafting a specification to comply
with the written description invalidity doctrine.
The illogic of the new written description test—measuring the sufficiency of a
specification’s disclosure by weighing one part of the specification against another—
may doom any hope of this court ever devising a neutral test or resolving the tension
with Phillips. When all else fails, as the new written description test has, consult the
statute. The statute sets the standard for measuring sufficiency of disclosure: “The
specification shall contain a written description of the invention, and of the manner and
process of making and using it, in such full, clear, concise, and exact terms as to enable
any person skilled in the art . . . to make and use the same.” 35 U.S.C. § 112, ¶ 1. In
sum, the statute sets forth the reliable enablement standard to measure sufficiency of
disclosure.
II.
Besides illustrating the tension with Phillips, Lizardtech illustrates the imprecision,
to say the least, of the revised written description doctrine. As might be expected, this
8
court provides little or no guidance about the standard it uses to decide that the
disclosure was “inadequate.”
Lizardtech’s two clear statements of written description law, “[the written
description must establish] that the patentee invented what is claimed,” Lizardtech, 424
F.3d at 1345 and, “an originally filed claim can provide the requisite written description,”
id. at 1346, are relegated to bookends surrounding an enablement-based application of
the new written description doctrine. Thus, after explaining that 35 U.S.C. § 112, ¶ 1 has
two separate requirements, Lizardtech goes on to explain that, “[t]hose two
requirements usually rise and fall together.” Id. at 1345. Lizardtech further unites the
requirements of paragraph 1, explaining:
Whether the flaw in the specification is regarded as a failure
to demonstrate that the patentee possessed the full scope of
the invention recited in claim 21 or a failure to enable the full
breadth of that claim, the specification provides inadequate
support for the claim under section 112, paragraph one.
Id. Far from explaining a neutral standard for applying written description, Lizardtech
seems to fall back on enablement, using the latter as a proxy for the former. See id.
(“[A] recitation of how to make and use the invention across the full breadth of the claim
is ordinarily sufficient to demonstrate that the inventor possesses the full scope of the
invention, and vice versa.”) That was expected. See Moba, B.V. v. Diamond
Automation, Inc., 325 F.3d 1306, 1326 (Fed. Cir. 2003) (Rader, J., concurring) (“With
some understanding of the difficulty and redundancy of the Lilly rule, the Federal Circuit
has begun to convert it into the enablement doctrine with a different label.”). But see id.
at 1327 (Bryson, J., concurring) (“[T]here is no question that Ruschig and subsequent
decisions have held that written description and enablement are separate statutory
9
requirements, and that written description is not simply a facet of enablement.”); In re
Curtis, 354 F.3d 1347, 1357 (Fed. Cir. 2004) (“[C]onclusive evidence of a claim’s
enablement is not equally conclusive of that claim’s satisfactory written description”).
Perhaps even more troubling than its lack of clarity about the proper test for
written description, Lizardtech appears to engage in a written description analysis that is
not technology neutral. Thus, the opinion explains that the written description
requirement prevents an inventor of a specific fuel-efficient engine from generically
claiming that engine. The only logical inference that can be drawn from the hypothetical
is that claims must not exceed the disclosed embodiments. Is a claim reciting a
“fastener” invalid because its specification only recites a screw? If not, is the difference
based on some distinction between fuel-efficient engines and fasteners? Or is the
difference found in the label “expansive claim language”? Thus, Lizardtech concludes:
[A] patentee cannot always satisfy the requirements of
section 112, in supporting expansive claim language, merely
by clearly describing one embodiment of the thing claimed.
Lizardtech, 424 F.3d 1346. When did the statute’s requirement of providing an enabling
description of the invention, the very objective of our patent laws, become a “mere” act
that renders a claim invalid under the now-fungible requirements of section 112? In
fact, this court in Lizardtech has not explained the standard that makes these claims
“expansive” and invalid as opposed to merely broader than the enabling embodiment,
especially in light of Phillips. Thus, while members of this court have expressed
optimism that future decisions would clarify written description, see University of
Rochester v. G.D. Searle & Company, Inc., 375 F.3d 1303, 1327 (Fed. Cir. 2004)
(“Future panel opinions may provide the necessary clarity.”) (Dyk, J., concurring in
10
denial of en banc review), the law is only becoming murkier. In fact, this court’s written
description invalidity opinions are now raising doubt in areas beyond the confines of that
doctrine.
III.
Finally, it is apparent that a significant number of Federal Circuit judges agree
that this court’s evolving written description doctrine needs clarification. See Rochester,
375 F.3d at 1304 (Newman, J., dissenting from the denial of rehearing en banc); id. at
1307 (Gajarsa and Linn, JJ., joining Rader, J., dissenting from the denial of rehearing
en banc); (Dyk, J., concurring in the denial of rehearing in banc) (“My vote to deny en
banc review, however, should not be taken as an endorsement of our existing written
description jurisprudence.”); Moba, 325 F.3d at 1328 (Bryson, J., concurring) (“Perhaps
the entire line of [written description] cases stemming from Ruschig is wrong, and
perhaps we should at some point address that question en banc. I take no position on
that issue at this juncture.”). However, it is equally apparent that the court is in no hurry
to clarify the issue. See Rochester, 375 F.3d at 1304 (denying petition for rehearing en
banc); Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 970 (Fed. Cir. 2002)
(denying petition for rehearing en banc). As this court’s case law creation strays farther
from the statute, its application only gets more strained. Meantime district courts must
attempt to reconcile the inconsistencies between Phillips and the progency of Lilly,
such as Lizardtech. From my perspective, this court should not postpone further en
banc reconsideration of its evolving written description doctrine.
11