We have written in the past about the importance of a robust and comprehensive written description. That importance became evident in Rivera v. ITC and Solofill, a recent Federal Circuit case regarding a granted patent for a coffee brewing device. While this situation was directed to coffee brewing, it is an important example that is applicable to patents in all sorts of different technologies, because the issue is with the specification, not the technology. The claims were directed to a brewing device with “a receptacle configured to receive brewing material.” The Court held that the claims were invalid, and therefore the patent was invalid, essentially because the specification and claims did not match.
Patent holder Rivera sued Solofill for infringement. Although the patent specification spoke heavily about the use of pods, provided a broad definition for pods, and showed figures inclusive of pods, the final claims did not use the word “pod” and instead used the word “container.” Earlier versions of the claims included “pods” and in the course of prosecution, the Applicant removed “pod” and inserted “container.” Claim 1, for example, defined a container as a portion of the brewer disposed in the brewing chamber, and comprising a receptacle to support brewing material and a cover and to accept input fluid. The specification did not mention containers as a part of the invention.
The specification did not mention containers as part of the invention, the specification distinguished “pods” from “containers”, every embodiment in the specification includes a “pod,” and because the embodiments required a filter and there was no filter in the claims, the claims were held unsupported by the specification and therefore not valid. This issue highlights the need for comprehensiveness and broadness in the specification.
While it is true that a patent applicant can be his/her own lexicographer, it is crucial to have unambiguous definitions. In this case, had “pod” and “container” been defined as synonyms, the claims might have passed scrutiny. In addition, in this case, the Applicant made clear in the specification that a filter was needed but left that out of the claim.
In sum, a robust specification, where language is well defined, even if defined broadly, is key to maintaining patentability.