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ARTICLE · 02 DECEMBER 2013

Later-Filed Claims Lack Written Description

McDermott Will & Emery
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Addressing whether claims amended during prosecution to cover a competitor’s product were supported by the originally filed written description, the U.S. Court of Appeals for the Federal Circuit affirmed a jury verdict invalidating the patent finding that the applicant improperly broadened the patent claims during prosecution to claim a genus where the specification only disclosed a species of the genus.

United StatesIntellectual Property
Gregory Yoder
Gregory Yoder
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Synthes USA, LLC v. Spinal Kinetics, Inc.

Addressing whether claims amended during prosecution to cover a competitor's product were supported by the originally filed written description, the U.S. Court of Appeals for the Federal Circuit affirmed a jury verdict invalidating the patent finding that the applicant improperly broadened the patent claims during prosecution to claim a genus where the specification only disclosed a species of the genus.  Synthes USA, LLC v. Spinal Kinetics, Inc., Case Nos. 13-1047, 1059 (Fed. Cir., Oct. 29, 2013) (O'Malley, J.).

Plaintiff Synthes sued defendant Spinal Kinetics (SK) for infringement of a patent directed to a spinal implant medical device. The patent's parent application, filed in 2003, disclosed and claimed grooves in plates of the implant that were used to anchor fibers in the implant to the plates. Five years after filing the application, the applicant amended the claims to replace the grooves with a plurality of

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